Wednesday, 18 December 2013

T 2532/11 – An Insufficient Link

This is a revocation appeal.

Rather than dealing with the decision as such, the patent proprietor chose to file a statement of grounds consisting of several requests and an explanation why they were thought to be novel and inventive.

The Board was not satisfied:

The statement of grounds of appeal

The legal framework

[2.1.1] For an appeal to be admissible, it has to comply with the requirements of A 108, R 99(2) and R 101(1).

A 108, third sentence, requires 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.”
R 99(2) provides that 
“In the statement of grounds of appeal the appellants 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”.
R 101(1) provides that 
“If the appeal does not comply with A 106 to A 108, R 97 or R 99, paragraph 1(b) or (c) or paragraph 2, the Board of Appeal shall reject it as inadmissible”.
[2.1.2] As to the content of the statement of grounds, Article 12(2) RPBA requires that: 
“The statement of grounds of appeal and the reply shall contain a party’s complete case. They shall set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed, amended or upheld and should specify expressly all the facts, arguments and evidence relied on.”
The case law

[2.2.1] The case law of the Boards of Appeal has consistently considered it to be incumbent on an appellant, in order to meet the admissibility requirements, to explain in detail why it considers the decision under appeal to be wrong, be it entirely or in part, thus imposing a direct and clear link between the contested decision and the grounds for appeal.

[2.2.2] In decisions G 9/91 and G 10/91 [18] the Enlarged Board of Appeal (EBA) held that “The purpose of the appeal procedure is mainly to give the losing party the possibility of challenging the decision of the Opposition Division on its merits”.

In the French version: “… de contester le bien-fondé de la décision.”

In the German version: “ … die Entscheidung sachlich anzufechten.”

The same wording was used in decisions G 4/93 [5] and G 1/99 [6.1].

It is thus clear that the appeal proceedings aim at contesting a decision.

[2.2.3] In decision G 1/99 [6.1] the EBA further pointed out that: 
“Indeed, issues outside the subject-matter of the decision under appeal are not part of the appeal.” and that “… within the limits of what in the subject-matter of the decision under appeal adversely affects it, it is the appellant who in the notice of appeal determines the extent to which amendment or cancellation of the decision under appeal is requested.” (emphasis added by the board).
[2.2.4] It follows from this that the appeal proceedings are confined to the subject-matter of the first instance proceedings and therefore that the statement of grounds of appeal should at least discuss this subject-matter.

The need for the above-mentioned link (see point [2.2.1]) is thus not only confirmed but also clarified in terms of its closeness.

[2.2.5] The case law further defines the content of the statement of grounds of appeal in such a way that it must specify the legal or factual reasons why the impugned decision should be set aside. The arguments must be clearly and concisely presented to enable the board (and the other party) to understand immediately why the decision is alleged to be incorrect, and on which facts the appellant bases its arguments, without first having to make investigations on their own (see in particular the decisions T 220/83, T 213/85, T 145/88, T 169/89 and T 1581/08.

[2.2.6] Moreover, it is also established case law that grounds sufficient for the admissibility of an appeal must be analysed in detail vis-à-vis the main reasons given for the contested decision (see T 213/85T 169/89; T 45/92 and T 570/07).

[2.3] The present case in view of the cited case law

[2.3.1] In the present case, the appellants submitted on 27 December 2011 a document entitled “Statement of Grounds of Appeal”.

It can however be clearly seen that these submissions do not contain any reference to the impugned decision, let alone any explanation as to why this decision should be wrong and thus be set aside.

[2.3.2] The board understands from the content of said statement that the appellants do not contest the finding of the Opposition Division (OD) as to:
  • the lack of novelty of the main request over D1d;
  • the lack of novelty of the third auxiliary request over D4;
  • the lack of compliance with R 80 of the second and fourth auxiliary requests;
  • the reasons for the late-filing of the first auxiliary request.

[2.3.3] Thus, none of the main grounds for revocation of the patent presented in the impugned decision was addressed in the statement of grounds of appeal.

Therefore, by applying the above cited case law, it should be concluded that the appeal has to be rejected as inadmissible for lack of compliance with the above-mentioned provisions of the EPC.

Newly filed requests

[2.4.1] The question arises whether newly filed requests can be seen as implicit grounds of appeal, or in other words, whether there is a link between the decision and the grounds.

[2.4.2] A statement of grounds of appeal supported by amended claims may define, at least implicitly, the extent to which the appellant wishes the decision under appeal to be set aside.

The issue however is whether the grounds are understandable and sufficiently linked to the contested decision in order to form an admissible appeal.

[2.4.3] The board is aware of a substantial body of case law where the sufficiency of the grounds was examined for the question of admissibility in relation to the filing of new claims. There are several decisions in which a relatively lenient position was adopted towards the appellants, in the sense that the appeals were deemed to be admissible if the competent board was able to infer from the particulars of the case the presumed intentions of the appellant and the probable reasons underlying its actions, see in particular decisions T 162/97 [1.1.2]; T 574/91 [1.2]; T 729/90 [1.2]; T 563/91 [1.2].

In an even broader interpretation, it was held that an appeal was sufficiently substantiated and that the requirements of A 108, third sentence were satisfied, even though the board did not state any specific reasons why the contested decision was wrong. The reasoning was that
  • there was a change in the subject of the proceedings due to the filing of new claims together with the statement of grounds; and that
  • the statement of grounds set out in detail why the raised grounds for opposition did not prejudice the maintenance of the patent as amended on the basis of these new claims (cf. in particular T 717/01 [2]; T 934/02 [2], referring to J xx/87 [1.4] and T 105/87).

[2.4.4] In the board’s view, it is certainly arguable that appeals should be decided primarily on their substance, and that parties should be given the possibility to argue their case without overly strict formal requirements. However, procedural principles have to be considered.

The principle of free disposition

[2.5.1] Even assuming that laborious sequences of exercises would tell the reader what the appellant’s case against the decision might be, such conjecture is exactly what the statement of appeal is designed to prevent: the purpose of the statement of grounds, together with the notice of appeal is to define the scope of the appeal. This definition lies within the discretion of the appellants as a part of the principle of free disposition.

[2.5.2] Without prejudice to provisions of A 114, which are of limited application in opposition proceedings, the board of appeal has the duty to assess whether the appeal is well-founded within the frame of the case as presented by the appellants but it cannot guess what the arguments are, let alone, provide arguments in lieu of the appellants.

The power of the board of appeal

[2.6.1] Conversely, the principle of free disposition does not extend to such a point that it should allow the appellants to build a new case, disconnected from the case as it stood during the first instance proceedings, so as to render the decision under appeal purposeless. The EPC’s provisions do not give the appellants the power to set aside the decision under appeal of its own volition, which would obviously be the case if it had the opportunity to modify its requests beyond the subject-matter of the first instance proceedings. In other words, the power conferred by A 21(1) to the boards of appeal to review decisions shall not be transferred to the appellants.

In the same way, decision T 240/04 [16.3] already stated as regards new claims not sufficiently connected to the subject-matter of the one previously filed:
“In einer solchen Situation den neuen Antrag zuzulassen würde einem Patentinhaber praktisch die Möglichkeit geben, nach Belieben eine Zurückverweisung an die Erstinstanz zu erzwingen. Dies würde den Einsprechenden benachteiligen und wäre auch nicht verfahrensökonomisch.“ 
Although the present issue relates to the admissibility of the appeal and not to the admissibility of new requests, the obligation to contest the decision of the first instance remains. Whether the appeal is only supported by new sets of claims or the decision under review has not been contested in the appeal proceedings, the end effect is the same: the board and the respondent in the first place are facing a new case which leads to the issue of remittal, in order to ensure a double degree of jurisdiction.

[2.6.2] In regard of all these considerations above, the present board is of the opinion that a direct link must be maintained between the decision under appeal and the statement of grounds of appeal.

The appellant cannot escape its obligation to explain why it does not agree with the decision, be it only in part. The appellant is not correct in its view, because the very nature of appeal proceedings is and remains the contestation of a decision.

This does not mean that the appellant shall be denied the right to file amended claims, but it must provide arguments in order to explain what is/are the issue(s) in the decision it considers to be erroneous and provide arguments and evidence to support its view. The amendments made to the claims in order to remove the grounds of the decision under appeal constitute an implicit acceptance of the decision and therefore cannot be regarded as grounds for appeal in the sense of A 108, second sentence EPC.

The requests of the present case

[2.7.1] In the present case, as the appellant confirmed in its latest submissions, the reasons for filing a modified main request and five auxiliary requests were based on the assumption that the decision of the OD was right in its findings that the opposed patent as granted and as modified in the course of first instance proceedings was not novel over D1 and D4, or as regards auxiliary requests 1, 2 and 4, that these requests were not formally admissible.

The aim of the present appeal is thus to gain an opportunity to get the patent maintained in amended form through new claims making the revoked patent compliant with the reasons given by the OD, or through the introduction of new features thus forming different embodiments of the alleged invention which were never discussed before regarding their compliance with the requirements of the EPC.

[2.7.2] Accordingly, even when considering the issue of admissibility in the light of the less strict case law, the board considers that the statement of grounds of appeal in the present case does not comply with the above mentioned legal provisions of the EPC.

[2.7.3] Consequently, the appeal must be rejected as inadmissible.

Should you wish to download the whole decision, just click here.

The file wrapper can be found here.


Anonymous said...

Oh, how I do dislike boards which follow such reasoning. More often than not, the new requests are filed by a new representative, rather than the original attorney who prosecuted the application. Having reviewed the case, the new rep. is firmly of the opinion that new claims are required. What does he/she do? Fight the old, hopeless requests, perhaps with some new ones stuck on or submit only new requests to cut down on the number of issues?
From a legal point of view it is the decision which is being appealed not the reasoning. If the decision was to allow the opposition and revoke the patent, the new requests are directly aimed at pesuading the board to overturn the decision, i.e. why it was wrong.

ExaMinus said...

If new claims were required, they could, and, in view of Art. 12(4) RPBA, probably SHOULD, have been filed before the OD.

MaxDrei said...

ExaMinus, I think EdT is simply pointing out that patent owners switch to a different EPO representative only after they have read the cold logic of the written Decision of the Opposition Division. Throughout the history of the case, up to that point of dawning horror, the owner and the initial representative have convinced themselves that their position is unassailable. Then reality kicks in, but only on receipt of the OD's written reasoning. What then? New representation for the Appeal. Does the Board give the new representative a chance to save the case for its owner? I would hope so.

Anonymous said...

EdT, how would you know whether a decision is right or wrong when you do not have any reasons for the decisions.
And the new rep should be able to find some "prima facie" arguments as to why a decision/reasoning was not correct ... just pro forma to have a substantiated appeal - such arguments don't need to be followed in the further proceedings, but instead the new claims could be offered (and with luck be admitted into the procedure).
Anyway, the BoA will tell that the appeal is not a continuation of the first instance proceedings but a review of its decision and reasoning. A new set of claims may overcome an objection but it does not render a decision on a prior request right or wrong - therefore a mere new set of claims cannot suffice to challenge the correctness of a decision (and consequently, cannot suffice to substantiate an appeal).

MaxDrei said...

For me, the crux issue ought to be whether to admit with the substantiation of the Appeal a fresh set of claims on which, prima facie, the patent can be upheld. Or will the Board shut that set out with the pat dismissal that you could have presented that set to the OD, but you didn't, and it's too late to present them for the first time now.

Whether or not Appellant goes through the charade of disputing the unassailable logic of the OD in its written Decision strikes me as not the issue on which to decide the case. That would be elevating form over substance wouldn't it?

Anonymous said...

What the relevant party and its Representative need to get into their heads is that there is no right to present anything new in the Appeal with regard to what was presented in the Opposition. The Appeal is there to confirm that the Opposition Division did their job properly. It is a legal safeguard, and a check-and-balance. If the OD did not, then the Board has to decide how to resolve the defective decision, whether to reverse the decision, whether to consider other factors not mentioned in the Decision, or to remit the case for further consideration by the first instance decision. It is at that point that new Requests or evidence might come into play. However, if the Decision was correct on the facts and argument presented at first instance, then there is no requirement for the Board to do anything further except confirm the Decision as being correct on the law and facts on which it is based.

The Appeal serves to safeguard the rights of parties against errors of the EPO, including the right to take and maintain a defective position, and the right not to present reasonable fallback positions as auxiliary requests. The Appeal is not there to compensate for the party or his Representative not being diligent, sensible or cautious. Running duff arguments, presenting defective requests or leading shaky evidence is not an error of the EPO, and therefore is not against what the Board of Appeal is there to safeguard.

Who, then protects the parties against foolish behaviour or poor advice/representation? In the former, nothing save Article 133(2). In the latter, the EQEs, EPI, national regulators, and the law of professional negligence, not DG3. Each Representative advises and acts in the name of each party, but each act, each argument, each piece of evidence, each request is legally that of the party, not the representative. Hence, "having a poor Representative" is no grounds for a valid appeal. Rather, it is grounds for a complaint against the Representative, rather than against the EPO.

MaxDrei said...

Three cheers for the text of that last Anonymous. I cannot remember ever having had administered to me a bigger dose of common sense. I imagine you to be in private life, towards EPO representatives and other ordinary mortals a very kind and courteous man but, when at work, chairing oral proceedings in Munich, an absolute scourge to us poor reps. on the road.

Gentle readers, heed his words and quake!

Oliver, for the future, we are relying on you!

Anonymous said...

The problem arises due to a lack of a definition of the nature of an appeal in the EPC. While national legislation will provide for an appeal being a review de novo or only only relating to questions on a matter of law, there is no such provision in the EPC. As a result, the Boards are left to interpret the RPBA as set by the Administrative Council helped by the G decisions such that Boards may decide to dismiss cases on formality grounds if they see fit rather than have to reach a decision on the correctness of the arguments presented.

ExaMinus said...

Dear MaxDrei,

From your posts, I do not think you're a "poor rep.". But there is nothing wrong with the hefty and healthy dose of common sense provided by Anonymous 10:09.

I see your point that a second representative would like to have a chance to make his points, and possibly fix what has been messed up by a first representative. But changing representative should not give a party any procedural advantage, and certainly does not grant any right to be heard anew.

Being nice to the ex-patentee here would be harsh to the opponent (even if he owed his victory to poor defense from the patentee than to a brillant attack of his).

Dura lex sed lex, as they say in an almost official language.

Anonymous said...

I fully agree that a voluntary change in representative cannot create new rights for the applicant. The applicant is free to choose his representative, but he has to bear the consequences of his choice. The applicant acts through his representative, so any screw up by the representative counts as a screw up by the applicant. The EPC system of law is not at all unique in this.

However, I do find it surprising that the Board seems to say that if the decision of the OD cannot be shown to be erroneous, the appeal cannot succeed. In principle, I have not so much against the idea that the Board should only decide whether the decision (and the procedure leading up to it) was correct. But the practice of most Boards is quite different. How is the applicant to know the policy of the Board that happens to treat his appeal?

MaxDrei said...

To that last anonymous:

These matters move slowly. For example, it took about 30 years for the national courts of Germany to "get" novelty under the EPC. That is real quick though, in comparison with the time it will take for the various DG3 Board Chairmen get their act together, on the question what is DG3's job and what is not. I daresay VP-DG3 has tried often enough, to get them to agree, but all in vain, thus far. They all have a righteous mind, and none of them defers to anybody.

But that's good, isn't it?