T 0349/09 (Admissibility/ABBOTT) 26-02-2010

The issues between the parties

1. This decision is concerned only with the admissibility of the appeal. The appellant complied with the time limits for filing the notice of appeal and written statement of grounds of appeal and paying the appeal fee (see Article 108 EPC). However, the respondent has challenged admissibility for lack of substantiation and based its arguments squarely on the absence in the statement of grounds of appeal of any link between the matters set out in the statement of grounds and the reasons given by the opposition division in its decision. It argues that the statement of grounds of appeal is no more than a "cut and paste" version of the notice of opposition from which the appellant's case on appeal cannot be clearly understood.

2. The appellant counters that by arguing variously that in this case such a link was not possible; that, while not set out expressly or verbatim, such a link was apparent from the statement of grounds of appeal; and that evidence of such a link appeared from the respondent's reply. The appellant also made a number of submissions based on individual case-law decisions.

3. Accordingly, the Board sees the issues to be considered as follows. First, whether the respondent's assertions about the statement of grounds of appeal are correct. Second, if they are correct, whether a link between the statement of grounds of appeal and the decision under appeal is or is not required. Third, if it is required, whether the appellant's argument that it was impossible to provide such a link in this case can succeed. And fourth, if that cannot succeed, whether the appellant's other arguments - that a link exists or by reference to case-law - can succeed.

The nature of the statement of grounds of appeal

4. The appellant conceded that the statement of grounds of appeal is "more or less an adaptation or condensation of the notice of opposition". There can be no doubt at all that the statement of grounds of appeal was prepared by simple editing of the earlier notice of opposition so as, for example, to refer to claims numbered as in the request allowed by the Opposition Division. Moreover, the editing was clearly done in great haste and/or with insufficient attention so that some obvious mis-spellings occurred and an objection in the notice of opposition (that under Article 53a EPC) was retained even though, as a result of the decision under appeal, it had become redundant. The respondent almost correctly observed that the only reference to the decision under appeal was in the request to set it aside - in fact there were two such references, on each on the first and last pages of the statement of grounds of appeal, and a third mention of the decision also on the first page in the sentence beginning "Claim 1 of the opposed patent as mentioned with the Interlocutory Decision pertains to...". That third reference immediately precedes the use of some twenty-one pages of text, recycled with slight editing from the notice of opposition, which contain no other reference whatsoever to the decision under appeal, let alone any attempt to relate its content to that decision. The respondent was beyond doubt correct to say it was a "copy and paste" version of the notice of opposition. The appellant was beyond doubt correct to say that there is no verbatim or explicit link between the grounds of appeal and the decision.

The requirement for a link between the statement of grounds of appeal and the decision under appeal

5. Article 108, third sentence, EPC is the basic legal provision relating to statements of grounds of appeal. It 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."

The importance of this provision is that, by requiring a statement of grounds of appeal, it calls for something more than, and different from, submissions made at first instance. As to what form that should take, one must turn to the Implementing Regulations.

6. The relevant provision of the Implementing Regulations is Rule 99(2) EPC which sets out in general terms the required contents of a statement of grounds of appeal. It reads:

"In the statement of grounds of appeal 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."

This makes quite clear that the statement of grounds of appeal must, first, supply the appellant's reasons for attacking the decision under appeal and, second, put forward the facts and evidence on which the appeal is based. Again, it is significant that Rule 99(2) EPC refers here to the appeal and not to the opposition. Of course, Rule 99 EPC governs appeals against other decisions than those of the Opposition Division. However, even within the limited ambit of opposition proceedings, the obligatory requirement is to substantiate the appeal and not just refer to or repeat the substantiation of the opposition. This distinction - namely, that oppositions attack patents, but appeals attack decisions - is crucial and the attack must be presented accordingly.

7. Additionally, Article 12(2) of the Rules of Procedure of the Boards of Appeal ("RPBA" - see Supplement to OJ EPO 1/2010, page 38) requires:

"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 similarity of Article 12(2) RPBA to Rule 99(2) EPC is clear. Again, there is the requirement to give reasons for attacking the decision under appeal and to put forward the facts, arguments and evidence relied on, which clearly means relied on in the appeal. Additionally, the statement of grounds of appeal must contain an appellant's complete case (if only because later amendments are not necessarily allowable - see Article 13(1) RPBA) and the facts, arguments and evidence must be specified "expressly".

8. Similarly, the case-law of the Boards of Appeal has consistently considered it to be incumbent on an appellant to file, by the end of the four month time limit, a statement of grounds which (either in itself or together with the notice of appeal) presents the Board with the appellant's case why it considers the decision under appeal to be wrong. A detailed survey of the case-law in question is at pages 621 to 625 of "Case Law" in the section VII.D.7.5 entitled "Statement of grounds of appeal". It is sufficient to mention here the general principles established by early case-law, namely that

(a) the statement of grounds of appeal should specify the legal or factual reasons on which the case for setting aside the decision is based, present clear and concise arguments to enable the board and the other party or parties to understand immediately why the decision is alleged to be incorrect, and on what facts the arguments are based, without first having to make investigations of their own; and

(b) to be sufficient for admissibility, the grounds of appeal must be analysed in detail vis-à-vis the main reasons given for the contested decision.

9. Just as there is a noticeable similarity between Rule 99(2) EPC and Article 12(2) RPBA as already noted (see point 7 above), so there is also an equally noticeable similarity between Article 12(2) RPBA and the basic principles of the case law (see point 7 and (a) and (b) in point 8 above). This is not coincidental. As has been observed elsewhere (see T 87/05 of 4 September 2007), the RPBA are in part at least a codification of the case-law on procedural practice. It would indeed be surprising if the RPBA did not reflect the case-law. This means that compliance with the basic principles of the case-law on substantiation will often ensure compliance with Article 12(2) RPBA - and vice versa. It also means that recourse to the case-law is unlikely to avoid a finding of inadmissibility if Article 12(2) RPBA has not been complied with. Article 12(2) RPBA provides the essential test of substantiation which the case-law supplements but over which it does not take precedence. The appellant referred to Article 12(2) RPBA as "crucial" and the Board agrees.

10. To summarise, the legislation and the case-law are unanimous in the requirement that a statement of grounds of appeal must present a reasoned case against the decision under appeal. All of Article 108 and Rule 99(2) EPC and Article 12(2) RPBA require reasons to support the appeal and both Rule 99(2) EPC and Article 12(2) RPBA require those reasons to say why the decision under appeal is attacked. While clearly implicit in those legislative requirements, the case-law adds that the grounds of appeal must be analysed vis-à-vis the reasons in the decision under appeal and must enable the board and the respondent to understand immediately why the decision is alleged to be incorrect: what the Board in its communication called the need for "argument or reasoning linking the matters set out in the statement of grounds with the reasons given by the opposition division in its decision". The legislation does not say in more detail how that link is to be made but, by requiring a complete case setting out expressly the facts, arguments and evidence relied on, Article 12(2) RPBA indicates it should, to use the appellant's word, be verbatim. If not spelled out in terms, the link must be at the very least be apparent from the expressly-stated contents of the statement of grounds of appeal, since the board and the other party or parties must be able to understand the appellant's case from the statement without having to make investigations of their own (see point 8(a) above).

The appellant's argument that it was impossible to provide a link

11. The appellant alleged (but only in subsequent submissions and not in the grounds of appeal) that the Opposition Division's decision misrepresented its arguments on priority. The decision said (in point 3.6 of the reasons) that there were no objections to priority when in fact the appellant (as opponent) did indeed have such objections. That, the appellant now submits, made it impossible to provide a link between arguments in the grounds of appeal and the decision under appeal. The Board cannot accept this. As the respondent submitted, if the appellant disagreed with what the Opposition Division decision said about priority, that disagreement should be expressed in the grounds of appeal but it is not. It would have been perfectly possible for the appellant to refer to its case on priority at first instance, to the Opposition Division's rejection (and, as the appellant now says, misrepresentation) of that case and, having shown the difference, set out the arguments why the decision was wrong. Far from being impossible, that would have been a very easy link to make.

12. The appellant takes the argument further however - since its other arguments rested on the issue of priority, they were not considered in the decision under appeal but, none the less, its statement of grounds of appeal begins with the question of priority and then proceeds to deal with other issues; thus it is apparent from the statement of grounds what parts of the decision are challenged. The most the Board can say of this line of argument is that the appellant now seeks belatedly to make the best of a bad job. Other than as appeared from the notice of opposition, the statement of grounds of appeal shows no relationship between priority and other issues although, as with the priority issue itself, that could have been done without difficulty. As the respondent mentioned, there are several other issues - including sufficiency of description, document D17 as indicative of an inventive step, and whether Article 54 EPC is satisfied - on which the Opposition Division decision made specific findings but which are just not mentioned in the grounds of appeal, with the result that the appellant's position is unclear. There is no reason why the appellant could not have made submissions about those findings.

The appellant's "implicit link" arguments

13. The appellant argued that, while its statement of grounds of appeal did not contain a verbatim link, one was none the less apparent because the statement focused on specific objections against certain claims that were found allowable in the decision of the Opposition Division. (The appellant did not use the word "implicit", but such must be the case in the acknowledged absence of an explicit link.) This argument is correct only in that, in the editing of the notice of opposition to produce the statement of grounds of appeal, the references to claims have been renumbered to replace the numbers of the claims as granted with the numbers of the claims as maintained. However, the substance of the text, and thus the reasons why the claims are objected to, remains almost verbatim the same as in the notice of opposition. At the very least, to try to understand the statement of grounds of appeal, the reader would need to trace the appellant's objections from the original notice of opposition to the decision under appeal in order to see how and to what extent the opposition succeeded, then read the grounds of appeal to see which of the original objections were still maintained, ignore those which although maintained clearly no longer apply, and then assume that, as regards the rest, the appellant intends to make exactly the same case as at first instance. Even assuming that laborious sequence of exercises would tell the reader what the appellant's case against the decision was, as the respondent observed such conjecture is exactly what the statement of grounds of appeal is designed to prevent. As the case-law demonstrates (see point 8(a) above), the Board and the respondent should be able to understand immediately why the decision is alleged to be incorrect, and on what facts the arguments are based, without first having to make investigations of their own. That is also the clear intention behind the requirement of Article 12(2) RPBA for a complete case which expressly sets out facts, arguments and evidence.

14. Turning to the appellant's second argument in support of an implicit link - that the respondent did actually understand the grounds of appeal since it dealt with substantive issues in its reply - the Board agrees with the respondent which argued that it had to guess what the grounds of appeal meant before replying but was forced to do so in order to make its complete case. The respondent could have filed a reply which challenged admissibility only; however, in doing so it would have taken the risk of not filing its own complete case (Article 12(2) RPBA applies to a reply as well as to a statement of grounds of appeal). The respondent could also have asked for an extension of time to file a reply on substantive issues but such extensions of time are only allowed exceptionally and at the Board's discretion (see Article 12(5) RPBA), so again it would have taken a risk. Thus the only safe course open to the respondent was to file a reply both challenging admissibility and, albeit on the basis of guesswork, making submissions on substantive issues. The appellant's argument is self-serving - just because the respondent did its best in a difficult situation does not mean the situation was not difficult. A substantive reply does not in itself make an unsubstantiated appeal admissible.

Case-law

15. In the Board's view, the case-law referred to by the appellant does not assist it. It referred first to G 10/91 (OJ EPO 1993, 420), the reasons for which are to be found in G 9/91 (OJ EPO 1993, 408). The appellant correctly submitted that these decisions held that an appeal must be confined to the same grounds as the opposition while new reasoning relating to such a ground may be raised on appeal. However, this cannot affect the appellant whose grounds of appeal not only included no new reasons relating to the original grounds of opposition but also no reasons why the decision on those grounds was challenged.

16. The appellant then submitted that T 644/97 of 22 April 1999 "more or less" states that an appeal is admissible if the appellant does not present anything which was not present in the opposition. That is indeed only "more or less" correct: T 644/97 actually held the opposite - that a statement of grounds of appeal does not need to contain new material to be admissible (see "Case Law", page 622). That is no basis for the proposition that the absence of new material ensures admissibility.

17. The appellant also referred to T 1/88 of 26 January 1989 in which an appeal was admissible which only argued that a particular document had not been properly evaluated by the Opposition Division. However, in that case the appeal, for all its substantiation was minimal, did attack the decision under appeal (see "Case Law", pages 622 to 623) which the appellant's statement of grounds of appeal does not.

18. The appellant also correctly submitted that in T 574/91 of 3 August 1993 a statement of grounds was held to be admissible even though it did not discuss any of the arguments in the contested decision and the sole argument put forward bore no connection with the decision. The appellant omitted however to add that the appeal was thereby limited to reviewing the grounds for revocation. By comparison, the present case concerns not one argument unrelated to a decision to revoke a patent but a multiplicity of arguments unrelated to a decision to maintain a patent in amended form (see "Case Law", page 623).

19. In relation to T 611/90 (OJ EPO 1993, 50), the appellant's submissions were again correct but the case is irrelevant as it concerned a statement of grounds of appeal containing an entirely fresh case: wholly unlike the present case in which the case presented in the statement of grounds could not be less fresh (see "Case Law", page 623 to 624). The appellant also argued that T 147/95 of 14 November 1995 held that it was not necessary for an appeal to deal with arguments in the appealed decision but only that the grounds of appeal give the legal and factual grounds from which the incorrectness of the decision can be derived. It submitted that this means the grounds of appeal need only refute the decision and not necessarily the reasons leading to the decision. Again, the appellant is correct but, again, the earlier decision is irrelevant. In T 147/95, the only argument on appeal against rejection of an opposition was based on a new document which the board of appeal considered admissible and then remitted the case to the first instance accordingly. This was therefore another "entirely fresh case" decision like T 611/90 (see above) and, indeed, it cites and follows that decision to which, in terms of jurisprudence, it adds nothing. The present case could not be further removed from T 611/90 and T 147/95: far from the statement of grounds of appeal presenting an entirely fresh case, it presents an entirely stale case from which the incorrectness of the decision cannot be derived.

20. The final decision cited by the appellant was T 65/96 of 18 March 1998 as to which it submitted, with reference to the redundant Article 53a EPC objection, that irrelevance and lack of cogency may lead to an unsuccessful outcome of the appeal, but do not of themselves render it inadmissible. Yet again, the appellant is correct but, yet again, the decision is not in point. The mere redundant repetition of the irrelevant Article 53a EPC objection cannot make an otherwise inadmissible appeal admissible. Even a reason which is certain to fail must be linked to the decision under appeal which, in the case of this particular objection, was not only not done but, if done, would in the circumstances have been absurd. The appellant has apparently missed the point of the respondent's argument which was, quite simply, that the repetition of the Article 53a EPC objection was an illustration of how the statement of grounds of appeal failed to address the reasoning of the decision under appeal.

21. The appellant's more general submissions with respect to the case-law were too vague to add anything to its case. To say the case-law is "very friendly" to an appellant once its arguments are within the framework of the opposition proceedings adds nothing to the appellant's submissions on G 10/91 (see point 16 above), "very friendly" as an assessment of such a large body of case-law being so general as to be meaningless. As regards the statement that an appeal is always admissible if it is reasoned with reference to the decision under appeal and if it can be understood, that is also far too general a summary of the case-law but, none the less, the appellant's own grounds of appeal fail to meet either of those criteria. The appellant was more correct in submitting that simply referring on appeal to submissions in the opposition is one of the rare cases where admissibility is not allowed - that was indeed the root cause of the appellant's difficulty. For the avoidance of any possible doubt, the Board adds that it can see no difference between the mere incorporation by reference in a statement of grounds of appeal of first instance submissions and, as in this case, the repetition of such submissions in extenso. In either case, the absence of any correlation of the grounds of appeal to the decision under appeal will be equally detrimental to admissibility.

Request to refer questions to the Enlarged Board of Appeal

22. The appellant's request to refer questions to the Enlarged Board of Appeal is inadmissible for several reasons. It was beyond doubt filed very late and gave the respondent no chance to consider the issues they raised. It would have been very easy for the appellant to have given earlier notice of the request, for example when it replied to the Board's communication on 26 January 2010. However, such lateness apart, there was quite manifestly no need for the Enlarged Board's opinion on such questions in order to dispose of this case as the appeal was clearly inadmissible by reference to both the relevant legislation and case-law.

23. Further, as the present decision shows (see points 4 to 10 above), the proposed questions could be answered by reference to well-established law and thus neither a need to ensure uniform application of the law nor an important point of law arises (see Article 112 EPC). The appellant's submission that this decision would conflict with T 147/95 is simply untenable. As indicated above (see point 20), decision T 147/95 concerned a quite different, indeed completely opposite, fact-situation (namely, an entirely fresh case) as to which there is already settled case-law, such as T 611/90 (OJ EPO 1993, 50) which was followed in T 147/95 itself. The present decision marks no change of attitude to admissibility, let alone a total change imposing tougher requirements as the appellant argued.

Conclusion

24. The Board concludes accordingly that none of the appellant's arguments succeed. While intended to show that the appeal was substantiated, the very fact that those arguments raised points (such as the treatment of the priority issue in the decision under appeal) wholly absent from the statement of grounds of appeal served only to underline the absence of substantiation. Not only did they fail to demonstrate the necessary link between the statement of grounds of appeal and the decision under appeal, they also showed that the grounds of appeal, contrary to Article 12(2) RPBA, neither contained the appellant's complete case nor set out expressly all the facts evidence and arguments on which it relied. In the circumstances, there was no alternative but to reject the appeal as inadmissible.