4.3.5 Incomplete case in grounds of appeal or reply – substantiation requirement – Article 12(3) and (5) RPBA
(i) Required degree of substantiation
In T 1128/21 the board explained that the degree of substantiation required under Art. 12(3) RPBA depended on the specific circumstances of the particular case. As a rule, a patent proprietor filing an amended claim request had to specify expressly and precisely (i) the basis in the application as originally filed for each amendment, (ii) which objections were intended to be overcome and (iii) reasons why the respective amendment would overcome the objections raised. These requirements were taken as a basis in the established case law for both Art. 12(3) RPBA and Art. 12(2) RPBA 2007 (see T 319/18 and CLB, 10th edn. 2022, V.A.5.12.6). See also T 1221/21, T 731/22 (see the summary in chapter V.A.4.3.5b) (ii)).
In T 1220/21 the board added that, if a claim request was intended to overcome novelty or inventive step objections, the proprietor should identify the relevant documents and the features which distinguish the claimed subject-matter therefrom (see T 1659/20). It also held that the specific extent and detail of the explanations required depended on the level of detail and accuracy of the objections to be overcome.
The boards have emphasised in several decisions the need for the appellant (patent proprietor) to address the grounds underlying the contested decision (e.g. T 559/20, T 430/20).
Blanket reasoning can be tantamount to a complete lack of reasoning. In T 559/20, for example, the board held that the blanket reasoning that the auxiliary requests were more limited than the main request and therefore novel and inventive for the same reason as the main request was clearly not sufficient to justify the allowability of the auxiliary requests if the board found the main request not to be allowable. See also T 437/20, T 309/21, T 2013/21. Similarly, in T 203/20 the appellant (proprietor) filed auxiliary request 9 with the statement of grounds of appeal, but failed to provide a substantiation as to why the amendments made would overcome objections against any higher-ranking request.
In T 2202/21 the board held that merely identifying the additional differences to the prior art was not sufficient, the proprietor (appellant or respondent) also had to explain why these differences were considered inventive. See also T 2532/17 (applying Art. 12(2) RPBA 2007).
In T 1220/21 the board pointed out that without an explicit reference and explanation by the party, information that can only be found in attached documents cannot be regarded as sufficient substantiation pursuant to Art. 12(3) RPBA.
Equally strict substantiation requirements were also applied in cases where the opposition division had rejected the opposition:
In T 1128/21, justifying these strict requirements, the board referred to the provision of Art. 12(3) RPBA that each party must set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed, amended or upheld, and specify expressly all the arguments relied on.
In T 904/21 the board did not admit auxiliary request 4 (which was filed by the respondent – patent proprietor – with the reply to the statement of grounds of appeal and corresponded to an auxiliary request filed during opposition proceedings), as the respondent had failed to indicate in its submissions how the additional features could overcome the objection of lack of inventive step raised by the appellant in its statement of grounds of appeal. See also T 1959/19 (summarised in section (ii) below), T 262/20, T 437/20, T 2202/21 and T 312/22.
The board in T 1220/21 pointed out that the duty to provide a basis for the amendments did not depend on whether the allowability of the request had previously been contested under Art. 123(2) EPC.
In several decisions, the boards have found there was no lack of substantiation in cases where no explanation as to why amendments were filed was needed because the amendments were self-explanatory (e.g. T 731/22, T 2964/18). See however T 1220/21.
Sweeping references made by the appellant or respondent to its case in first-instance proceedings are inconsistent with the requirement of Art. 12(3) RPBA (see chapter V.A.4.3.5b) (iii) below and chapter V.A.2.6.5).
(ii) Self-explanatory amendments
In T 731/22 the board began by confirming that, as a rule, a patent proprietor filing an amended claim request had to specify expressly and precisely the basis in the application as originally filed for each amendment, which objections were intended to be overcome and reasons why the respective amendment would overcome the objections raised. However, the necessary scope and level of detail of the explanations could not be determined in absolute terms but depended on the specific circumstances of the particular case. Furthermore, there was no lack of substantiation in cases where no explanation as to why amendments were filed was needed because the amendments were self-explanatory (see CLB, 10th edn. 2022, V.A.5.12.6). The board affirmed that this was so in the case in question because only a novelty objection had been raised and it was self-explanatory that the structural limitation was an attempt to restore novelty to the document concerned.
Likewise in T 2964/18 the board considered the deletion of claim 1 in auxiliary request 4 to be self-explanatory in the sense that the board and the other party were in a position to understand which outstanding objections were meant to be overcome.
In T 1959/19, on the other hand, the board rejected the respondent’s argument that the wording of auxiliary requests I to XVII (which had already been submitted in the opposition proceedings) made it clear why they met the requirements of the EPC, namely simply because these requests had been further distinguished from the prior art compared with the version as granted. In the board's view, the prior art from which the subject-matter had been distinguished was not immediately discernible. Likewise, in T 319/18 and T 1128/21 the boards did not consider that the purpose of the respective amendments in respect of overcoming the prevailing objections was self-explanatory. See also T 262/20
In T 1220/21 the board took a different approach to self-explanatory requests. It held that an amended request that was self-explanatory nevertheless did not meet the standard as set out in Art. 12(3) RPBA, because an implicit argument did not meet the requirement that the party should expressly specify the arguments relied on (citing T 2598/12).
(iii) Reference to requests or supporting arguments filed at first instance
A sweeping reference by the appellant to its case in the first-instance proceedings was not sufficient to establish why the contested decision should be reversed. This approach is at odds with the appeal proceedings, in which, the appellant is obliged under Art. 108 EPC, R. 99(2) EPC and Art. 12(3) RPBA, to present a complete case with its statement of grounds of appeal, one that would allow the board and the other parties to understand why the contested decision should be reversed without having to make any further investigations of their own (T 706/17; also set out in T 2117/18 in relation to Art. 12(2) RPBA 2007, which was only amended slightly). See also T 2457/16 (sweeping reference to requests filed at first instance without any further details, thereby shifting the responsibility to select a request that might ultimately be allowable to the opponent and the board).
The board in T 1041/21 also deemed sweeping references made by the respondent (patent proprietor; the successful party in the first-instance proceedings) to its case in said proceedings to be inconsistent with the requirement of Art. 12(3) RPBA. Referring to or merely repeating arguments made in the opposition proceedings did not make it immediately clear for either the board or the other party which objections raised by the appellant in its appeal against the main request had been remedied by the amendments made in the auxiliary requests, or to what extent and why.
In T 503/20, the board endorsed this view and referred to the wording of Art. 12(3) and (5) RPBA and the explanatory notes to Art. 12(5) RPBA (Supplementary publication 2, OJ 2020, 57), according to which a party is required to "specify expressly" all the requests, facts, etc. relied on.
On the other hand, see also T 108/20, in which the board took the view that if a party refers to a submission in the first-instance proceedings to which no response was given, a sweeping reference is sufficient for said submission to be part of the appeal proceedings.
(iv) Claims not presented in full
In T 1421/20 requests 1a to 5a were introduced and commented on in the statement of the grounds of appeal but no claims were filed at that stage. Hence they did not fulfil the requirements of Art. 12(3) RPBA and the board had discretion not to admit them into the proceedings for this reason only (Art. 12(5) RPBA). Since the requests were not part of the decision under appeal, they were further considered to be amendments (Art. 12(2) and (4) RPBA).
(v) Whether unsubstantiated requests have been validly filed
The boards differ in opinion as to whether an unsubstantiated request is to be considered to have been validly submitted only at the time when sufficient substantiation was provided (see e.g. T 319/18, T 1191/18 and T 2117/18) or whether an unsubstantiated request is merely not admitted under Art. 12(5) RPBA (see e.g. T 2457/16, T 1128/21, T 1220/21), and the later filed substantiation not admitted under Art. 13 RPBA. For further details, see chapter V.A.4.2.3h). See also CLB, 10th edn. 2022, V.A.5.12.6 "Unsubstantiated requests" on the case law under the RPBA 2007.
In T 321/21 the board discussed the two approaches to dealing with unsubstantiated requests and objections and pointed out that a main difference between the two approaches appeared to be whether or not a board had to take a formal admittance decision on a claim request or objection which it considered unsubstantiated.
- T 2271/22
Dans l'affaire T 2271/22 la division d’opposition a rejeté l'opposition conformément aux dispositions de l'art. 101(2) CBE. La requérante a demandé l'annulation de la décision de rejet de l'opposition et la révocation du brevet dans son ensemble.
Dans sa réponse au mémoire exposant les motifs du recours, l’intimée a déclaré qu'elle maintenait "toutes les requêtes déposées en 1ere [sic] instance". Ce n’était qu’en réponse à la notification selon l’art. 15(1) RPCR que l’intimée a précisé qu’il s’agissait bien de la première requête subsidiaire déposée le 2 juin 2021 et de la deuxième requête subsidiaire déposée le 28 mars 2022.
La chambre a relevé que, dans sa réponse aux motifs du recours, l'intimée n'avait donné aucun argument pour soutenir la recevabilité et le fondement de ces requêtes subsidiaires au cas où la chambre partagerait le point de vue de la requérante en ce qui concerne les revendications telles que délivrées. En particulier, l'intimée était restée silencieuse sur la question d'une activité inventive basée sur les caractéristiques techniques ajoutées. La chambre a aussi noté que la requérante avait attaqué ces requêtes subsidiaires dans son mémoire de recours..
La chambre n’a pas accepté l’argument de l’intimée que, la décision attaquée ayant maintenu le brevet conformément à la requête principale, l’art. 12(3) RPCR, selon lequel le mémoire et la réponse doivent présenter de façon claire et concise les motifs pour lesquels il est demandé d'annuler, de modifier ou de confirmer la décision attaquée, ne s’appliquerait pas aux requêtes subsidiaires dans l’espèce. La chambre a clarifié que, si l'intimée demande de manière subsidiaire le maintien du brevet conformément à une requête subsidiaire, elle doit présenter dans sa réponse au mémoire de recours les motifs pour lesquels il est demandé de modifier ou de confirmer la décision attaquée et d'exposer expressément et de façon précise l'ensemble des requêtes, faits, arguments et preuves invoqués, même si cette requête subsidiaire avait déjà été déposée pendant la procédure d'opposition et jamais traitée par la division d'opposition. Par conséquent, les exigences de l'art. 12(3) RPCR n’étaient clairement pas remplies en ce qui concerne ces requêtes subsidiaires.
La présentation d’arguments quelques jours avant la procédure orale prévue ne pouvait, en l’absence de circonstances exceptionnelles, remplacer l’exposé exigé par l’art. 12(3) RPCR.
En conclusion, la chambre a considéré que les deux requêtes subsidiaires n'étaient pas motivées et, par conséquent, n'étaient pas recevables dans la procédure de recours (art. 12(3) et (5) RPCR).