T 2532/11 (SILICA DISPERSION / AKZO NOBEL) 14-10-2013

ADMISSIBILITY OF THE APPEAL

1. Formal requirements

The appeal complies with the time limits for filing the notice of appeal and the statement of grounds of appeal. The appeal fee was paid in due time.

2. The statement of grounds of appeal

2.1 The legal framework

2.1.1 For an appeal to be admissible, it has to comply with the requirements of Article 108, Rule 99(2) and Rule 101(1) EPC.

Article 108, third sentence, EPC, 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."

Rule 99(2) EPC 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".

Rule 101(1) EPC provides that "If the appeal does not comply with Articles 106 to 108, Rule 97 or Rule 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."

2.2 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 0009/91 and G 0010/91, point 18 of the reasons, the Enlarged Board of Appeal 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 0004/93 (point 5 of the reasons) and G 0001/99 (point 6.1 of the reasons).

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

2.2.3 In decision G 0001/99 (point 6.1 of the reasons), the Enlarged Board of Appeal 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 0220/83 (OJ EPO 1986, 249), T 0213/85 (OJ EPO 1987, 482), T 0145/88 (OJ EPO 1991, 251), T 0169/89 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 0213/85, OJ EPO 1987, 482; T 0169/89; T 0045/92 and T 0570/07).

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 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 Rule 80 EPC 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.

2.4 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 0162/97, point 1.1.2 of the reasons, (not published in OJ); T 0574/91, point 1.2 of the reasons; T 0729/90, point 1.2 of the reasons; T 0563/91, point 1.2 of the reasons.

In an even broader interpretation, it was held that an appeal was sufficiently substantiated and that the requirements of Article 108, third sentence EPC 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 0717/01, point 2 of the reasons; T 0934/02, point 2 of the reasons, referring to J xx/87, OJ EPO 1988, 323, point 1.4 and T 0105/87).

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.

2.5 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 Article 114 EPC, 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.

2.6 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 Article 21(1) EPC to the boards of appeal to review decisions shall not be transferred to the appellants. In the same way, decision T 0240/04 (point 16.3 of the reasons) 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 Article 108, second sentence EPC.

2.7 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 opposition division 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 opposition division, 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.