Tuesday, 6 December 2011

T 95/10 – Too Concise

The patent proprietor appealed against the decision of the Opposition Division (OD) revoking the opposed patent. He filed a very concise notice/statement of grounds of appeal (cited in the decision).

The Board found the appeal to be inadmissible, for the following reasons:

*** Translation of the German original ***

[1] A statement of grounds of appeal only qualifies as such if it deals with the impugned decision and does not only refer to submissions made during the opposition proceedings (established case law of the Boards of appeal, e.g. T 220/83 and T 213/85). There are three reasons for this:

First, the appeal proceedings are not a continuation of the opposition proceedings. They are distinct proceedings wherein all the facts, evidence and arguments that are considered essential may have to be filed anew. The Enlarged Board of appeal has referred to the independent legal nature of the appeal proceedings in its decisions G 10/91, G 9/92 and G 4/93.

Secondly, the statement of grounds of appeal presupposes that the appellant deals with the impugned decision. Just as the EPO has to grant the parties the right to be heard (A 114) by not only noting the submissions of parties but by dealing with them in a visible manner, the request for a legal dialog between the Board, the appellant and the respondents that is made when an appeal is filed requires the appellant to deal with the arguments of the impugned decision which he considers erroneous.

Thirdly, it is necessary that [the statement of grounds of appeal] deal [with the impugned decision] because otherwise neither the Board nor the respondents can understand for which reason the impugned decision is considered erroneous. However, this knowledge is needed if the respondents are to oppose the arguments of the appellant, and the Board is to be enabled to make a factual decision.

[2] In the present case the notice of appeal dated December 10, 2009, makes the following statement:
“The OD has neither taken into account nor even considered our statements regarding novelty and inventive step of July 15, 2009; therefore, it has violated the constitutional (verfassungsmäßig) right to be heard. As a consequence, the appeal is admissible and reasoned.”
[3] Decision T 574/91 has found a statement of grounds of appeal which only contained the indication that the OD had “missed the point in its decision” to be sufficient. This decision cannot be applied to the present case. First, the facts underlying the cited decision show that the appealing patent proprietor had filed a new set of claims together with the statement of grounds of appeal, which, according to the established case law of the Boards of appeal is sufficiently substantiated as such (e.g. T 934/02). Moreover, apparently the factual situation underlying T 574/91 was such that the OD had based the lack of inventive step on one singles reason and, therefore, it was not difficult for the Board of appeal and for the respondents to determine what the appeal was directed at. In the present case, however, the OD has given very carefully drafted and detailed reasons why the European patent was neither novel (in view of D12) nor inventive (D801 and D3; D801 and D9; D802 and D3; D12 and D801 or D12 and D 802). Therefore, the appeal could only have been allowed if none of the cited documents as such or in one of the above mentioned combinations could have led to the revocation of the patent. Therefore, the appellant would have had to deal with these reasons on which the impugned decision was based, as explained in T 213/85.

[4] The Board cannot see why these requirements for the duty to substantiate established by the Boards of appeal in their constant case law “generally and obviously does not guarantee the indispensable level of protection in the instances of the EPO” as the appellant submitted in his letter of March 31, 2011.

[5] However, the appellant does not have to comply with the above requirements for substantiating an appeal if the decision of the OD itself does not deal with the facts and arguments submitted by the appellant during the opposition proceedings (which in itself is already a substantial procedural violation), which resulted in the appellant being caused and enabled to reformulate and to substantiate its arguments filed during the opposition proceedings in the light of the decision. This is exactly what the appellant has submitted by complaining in its notice of appeal that the OD had neither taken into account nor even considered his statements regarding novelty and inventive step filed on July 15, 2009.

In its written submission of July 15, 2009, the patent proprietor comments the three oppositions. As far as the facts and arguments of opponent 2 are concerned, he states, for instance:
“D8 (DE 19 746 563 A) does not disclose an unregulated high-pressure pump. Moreover, D8 does not disclose an control device either, nor does it disclose a high-pressure pipe with a high-pressure reservoir.

Moreover, the connection of a control valve with an injection valve is not disclosed in column 3, lines 39 to 36.”
The OD on its part has precisely analysed the documents referred to by the opponents. When dealing with document D8 mentioned just before, the OD explains briefly, but clearly, where and why it considers the features mentioned by the patent proprietor (high-pressure pump, control device, high-pressure pipe with a high-pressure reservoir, connection of a control valve with an injection valve) to be disclosed in D8. When doing so, the decision of the OD refers to items that are found either in the description or in the drawings. Therefore, the Board is of the opinion that it cannot be affirmed that the OD when taking its decision has neither taken into account nor even considered the – anyway, very brief and general – submissions of the patent proprietor contained in his letter dated July 15, 2009.

[6] In its decision the OD has dealt with all the documents referred to by the opponents and given them due regard. Based on this appreciation it has held the European patent to be neither novel nor inventive. Therefore, a statement of grounds of appeal would have required the appellant (patent proprietor) to deal with the OD’s analysis and to try to disprove all the lines of argument used by it. However, the appellant has not done this for any of the lines of argument. […]

The appeal is dismissed as inadmissible.

To download the whole decision (in German), click here.

The file wrapper can be found here.