Having an appeal dismissed on substantive grounds is not a pleasant experience, but having it dismissed as inadmissible is even more painful.
This is what happened to the appellant in the present case, an appeal against the decision of the Examining Division (ED) to refuse the application under consideration.
At the end of oral proceedings (OPs), the ED had announced that it intended to grant the patent as amended during the OPs held on February 13, 2008. A set of claims filed on December 21, 2007, had been found not to be allowable.
A R 71(3) communication was issued on March 12, 2008.
The applicant replied by a letter dated July 7, 2008, stating that it could not give its agreement on the text for grant. It requested the ED to grant a patent based on the claims filed on December 21, 2007.
Unsurprisingly, the application was refused.
The applicant filed an appeal.
Even though R 71 has changed since then, which should make it more difficult for an applicant to find itself in such a situation, the decision of the Board of appeal provides a nice overview over the requirements for an appeal to be admissible.
 A 108, third sentence, provides that within four months of notification of the decision a statement setting out the grounds of appeal shall be filed in accordance with the Implementing Regulations. According to R 99(2), in the statement of grounds of appeal (SGA) the appellant shall indicate the reasons for setting aside the decision impugned, or the extent to which it is to be amended, and the facts and evidence on which the appeal is based. An appeal which does not comply with this requirement shall be rejected as inadmissible (R 101(1)).
[1.1] If the appellant submits that the decision under appeal is incorrect, then the statement setting out the grounds of appeal must state the legal or factual reasons why the impugned decision should be set aside. The arguments must enable the board to understand immediately why the decision is alleged to be incorrect and on what facts the appellant bases its arguments, without first having to make investigations of its own (cf. T 220/83  and T 177/97 ; affirmed by numerous decisions).
Whether the requirements of A 108, third sentence, in conjunction with R 99(2) are met has to be decided on the basis of the SGA and of the reasons given in the contested decision (see for example J 22/86 ; T 162/97 [1.1.2]), taking into account any amendments made to the claims.
Exceptionally, it has been acknowledged that “the requirement for admissibility [laid down in A 108 EPC 1973] may be regarded as satisfied if it is immediately apparent upon reading the decision under appeal and the written statement [of grounds] that the decision should be set aside” (see J 22/86 [headnote 1]).
[1.2] Different principles may apply if the appellant does not submit that the decision under appeal is incorrect but files new claims together with the SGA. In this respect, T 934/02  provides the following summary of T 717/01:
“An appeal of the patent proprietor is to be considered sufficiently substantiated within the meaning of A 108, third sentence, even though it does not state any specific reasons why the contested decision is wrong, if(i) there is a change in the subject of the proceedings due to the filing of new claims together with the SGA(ii) the SGA sets out in detail why the raised grounds for opposition do not prejudice the maintenance of the patent as amended on the basis of these new claims.”
Relying on this stance, the board in T 934/02 saw no reason why the appellant (patent proprietor) in its appeal should be obliged to deal with the reasoning in the opposition division’s decision when such reasoning no longer applied in view of the amended claims. An appeal might be substantiated by filing amended claims which deprived the contested decision of its basis. It was therefore not necessary, and would also be pointless, for the purposes of adequately substantiating an appeal, to file grounds in support of a version of a claim that the appellant (patent proprietor) was no longer defending in the appeal proceedings.
Analogously to the situation under point [1.1] where the appellant submits that the decision under appeal is incorrect, in the present board’s view the requirement for admissibility may exceptionally also be regarded as satisfied where the appellant makes no such submission if it is immediately apparent upon reading the decision under appeal and the written SGA that the decision should be set aside. In addition, there may be no need for explanation if – unusually – the amendments offered self-evidently overcome the grounds for the decision (see T 1276/05 [1.2]).
 In the present case, the ED did not refuse the application on the basis that the previous set of claims on file could not be allowed. The applicant had requested the grant of a patent on the basis of a set of claims to which the ED had not given its consent under R 137(3). The application was therefore refused on the ground that the ED, pursuant to A 113(2) EPC 1973, was bound to decide on a text submitted to it. Thus the decision under appeal was based on the ground that there was no agreed set of claims. Implicitly this meant that a patent could not be granted (A 97(1) in conjunction with A 78(1)(c) EPC 1973), and that the application consequently had to be refused (A 97(2)).
[2.1] The SGA does not give any reasons why the decision under appeal is thought to be incorrect, or discuss the absence of an agreed set of claims underlying it. The appellant does not dispute that there was no agreed set of claims and that, as a consequence, the ED was entitled to refuse the application. Nor does the appellant dispute that the ED was entitled to exercise its discretion under R 137(3) or that it had exercised this discretion in accordance with the right principles. Instead the SGA gives arguments as to why the claims of the sole request filed with the SGA are clear and why the subject-matter of these claims is both new and inventive in view of the prior art cited in the first-instance proceedings. Furthermore, the appellant did not comment on the issue of admissibility of the appeal raised by the board, in the communication annexed to the summons to OPs, because the board could not see that the appellant, in the SGA, had addressed the decision under appeal by providing reasons as to why the refusal should be set aside. Against this backdrop the board must conclude that the appellant does not dispute that the decision under appeal was correct.
[2.2] It is also not apparent upon reading the decision under appeal and the written statement that the decision was so flawed that it should be set aside (see point [1.1] above). On the contrary, the board cannot criticise the ED’s exercise of its discretion under R 137(3) not to admit the applicant’s request. In exercising its discretion, the division took into account the very late stage in the proceedings at which the applicant had requested to revert to its previously filed request, together with the fact that this request had already been considered in the OPs before the division and, subsequent to the division’s unfavourable opinion, had been withdrawn by the applicant. The ED thus took account of the right principles, as required by the Enlarged Board in G 7/93 [2.2-2.5].
[2.3] Hence the present case corresponds to the situation described above, at point [1.2], citing T 717/01 and T 934/02, insofar as the appellant has not submitted that the decision under appeal was incorrect but filed new claims of a sole request together with a SGA maintaining that these claims were clear and that their subject-matter was both new and inventive. As in those two cases, there was a change in the subject of the proceedings due to the filing of new claims together with the SGA.
[2.4] However, unlike the situation in T 717/01 and T 934/02, as already stated, the application was not refused on the basis that the previous set of claims on file could not be allowed, i.e. for lack of clarity, novelty or inventive step. Rather, the decision under appeal was based on the ground that there was no agreed set of claims, due to the fact that the ED had exercised its discretion not to re-admit the claims of 21 December 2007 into the proceedings after having discussed them at OPs and the applicant having withdrawn them. The underlying principle for the exercise of the ED’s discretion is “the EPO’s interest in bringing the examination procedure to a close” (see G 7/93 [2.5]), i.e. the principle of procedural economy, which has to be balanced against the applicant’s rights, for example and as was the case in G 7/93, to obtain a patent which is legally valid in all of the designated states. In the present case, by changing its mind with respect to the set of claims according to which a patent was requested and reverting to the set of claims that it had withdrawn during the OPs, the appellant was trying at a very late stage in the proceedings to reopen the discussion on questions of substantive patent law.
Under these circumstances, in the board’s view, the SGA should have set out why the appellant should be given the opportunity to have the proceedings continued before the board of appeal. The appellant however has not furnished any such explanation.
[2.5] Nor do the amendments submitted together with the SGA self-evidently overcome the grounds for the decision (see point [1.2] in fine above).
It is not self-evident from the appellant’s submissions on filing the appeal that the amended claims filed with the SGA overcome the reason for the refusal. Such a reason is not apparent from these amended claims alone; in particular, they do not correspond to the ones that were considered allowable by the ED […]. The appellant also did not provide arguments in the SGA concerning the question as to which rights of the appellant had to be balanced against the principle of procedural economy in order to admit an appeal based on these amended claims. In the present case the appellant only provided arguments as to why the amended claims were clear, novel and involved an inventive step in view of the prior art cited in the first-instance proceedings. Such arguments may or may not be suitable to address objections with respect to clarity and inventive step. But such reasoning does not take into account that an applicant does not have a procedural right to amend application documents at any time. The filing of amendments is governed by R 137. In appeal proceedings, the right to file amendments may be further restricted by Articles 12 and 13 RPBA. Therefore the mere filing of amended claims and the submission of arguments relating to substantive issues is not enough, in cases such as the present one, to convince the board that the appellant could only present the amended claims together with the SGA, and thereby to overcome the reason for refusal.
 It follows from the above that the present SGA does not fulfil the requirements of A 108, third sentence, in conjunction with R 99(2). Thus the board must reject the appeal as inadmissible pursuant to R 101(1).
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