b) Submissions at first instance not automatically part of appeal case

Several decisions have pointed out that submissions made by a party during the preceding administrative proceedings are not automatically part of any subsequent appeal proceedings where they have not been reiterated in a substantiated manner at the outset of those appeal proceedings. Raising these submissions after the initial phase of the appeal proceedings therefore constitutes an amendment to the party's appeal case (see e.g. T 2024/16, T 276/17, T 241/18, T 1108/16 and T 1577/19, citing G 9/92 date: 1994-07-14 and G 4/93, OJ 1994, 875).

In T 276/17 the board explained that it followed from Art. 12(3) RPBA that facts and evidence submitted in the opposition proceedings were not automatically part of the appeal case. It was not enough for the grounds of appeal (submitted here by the patent proprietor) to make a sweeping reference, without any further explanation, to the minutes of the oral proceedings and to the arguments and facts mentioned therein.

The board in T 1439/16 likewise pointed out that it was the appellant who defined the extent of the appeal and that, according to Art. 12(3) RPBA, the statement of grounds of appeal had to contain a party's complete case. It had been the choice of the appellant in the case in hand to make an objection of added subject-matter only to claim 1 and not to claim 8 in its statement setting out the grounds of appeal.

Regarding documents referenced in the patent specification, see chapter V.A.4.2.2e).