c) Incomplete appeal case – unsubstantiated objections or defence – Article 12(3) RPBA  

(i) Required degree of substantiation 

Under Art. 12(3) RPBA, the appellant (opponent) has to set out clearly the reasons for requesting that the decision under appeal be reversed and specify expressly all facts, objections and evidence relied on. Attacking the decision only generally or referring generally to the case made in the opposition proceedings was not enough for this (T 2796/17).

In other words, in order to substantiate an objection in the appeal proceedings which the opposition division did not consider convincing, it is necessary to provide specific reasons why the finding and the reasoning in the decision under appeal are supposedly incorrect with regard to this objection. Arguments which have already been put forward in the opposition proceedings may be included in these reasons, but must be put in the context of the decision under appeal (T 2117/18 applying the substantially identical Art. 12(2) RPBA 2007; see also T 557/21, T 1079/22, T 266/23).

The party has to present a logical and structured chain of arguments to support the alleged objection (e.g. T 1217/17, T 2883/19, T 2649/22).

In T 2253/16 the only argument the appellant (opponent) had put forward in its grounds of appeal in support of its assertion that the subject-matter of claim 1 lacked novelty over D4 was that the contested decision contradicted itself on one of the features. The board observed that there was no analysis of D4 showing where the appellant considered what claim features to be disclosed. Art. 12(3) RPBA required that the grounds of appeal contain the appellant's complete case. The board could not simply refer to the submissions made in the opposition proceedings, it being clear from Art. 12(3) RPBA that they were not automatically part of the appeal case. An unspecific reference to the notice of opposition made no difference; Art. 12(3) RPBA required that all facts and objections be specified expressly.

For further cases relating to insufficient substantiation of an objection, see e.g. T 2227/15 (with regard to Art. 12(2) RPBA 2007, which, as the board noted, corresponds to Art. 12(3) RPBA), T 565/16, T 1617/20, T 186/20. In all these cases, there was no substantiation of why the opposition division's reasoning and conclusions should be found to be incorrect.

In T 1695/21, on the other hand, the board considered the substantiation of an objection under Art. 84 EPC as sufficient because the subject of the objection had been essentially apparent from the specific points in the minutes of the oral proceedings before the opposition division to which reference had been made.

However, see also T 108/20 regarding sweeping references to a submission in the first-instance proceedings to which no response was given (objections against auxiliary request 3).

(ii) Failure to address auxiliary requests filed in opposition proceedings but not considered in the contested decision 

According to the board in T 664/20, the statement of grounds of appeal of an appellant (opponent) had to include its entire case as regards all the requests pending before the opposition division, including those which were not considered in the contested decision. In this case, the appellant had produced documents from an additional search only after the proprietor had re-filed requests already submitted at the oral proceedings before the opposition division but not decided upon by it. As a result, the board decided not to admit these documents under Art. 12(3) and 13(1) RPBA.

For a different view, however, see T 2035/16. In a similar situation the board considered that the rejoinder had been the first opportunity for the opponent to respond to the introduction of the auxiliary request in appeal proceedings. According to the board, while it was true that the same request had been submitted to the opposition division, their decision had not dealt with it, and it had not been part of appeal proceedings until the proprietor had sought to make it so.

(iii) No requirement to address all dependent claims 

In T 750/18 the board held with regard to Art. 12(2) RPBA 2007 that presenting a complete case did not imply that an appellant-opponent, impugning a decision to maintain a patent in granted or amended form, had to raise objections against all the dependent claims. The appellant/opponent had to set out clearly and concisely the reasons why it requested that the decision under appeal be reversed. Objections against an independent claim found allowable by the opposition division were therefore sufficient to comply with this requirement.

(iv) Defence – reference to first instance submissions 

In T 503/20, in which the respondent (patent proprietor) disputed an alleged public prior use, the board decided to take no account of the part of the case in the reply to the appeal that merely made a sweeping reference to the opposition case. The board justified this in particular on the grounds that the respondent had not discussed the decision in any way, even though the decision had spelled out why the public prior use was deemed to have been proven and which patentable features were deemed to have been disclosed as a result. The board noted that simply referring to the opposition case was not a substitute for appropriate substantiation in the appeal proceedings; it was imperative to present a complete case as per Art. 12(3) RPBA, because it cannot be left to the board to investigate which of the arguments from the opposition proceedings might still be relevant in light of the contested decision and its findings (as in T 1792/17 regarding RPBA 2007). By the same token, the board refused to admit the extracts from the reply to the opposition and the rejoinder in the opposition proceedings included in a later submission on appeal because they merely repeated the arguments from said earlier submissions word-for-word and the patent proprietor did not discuss the opposition division's findings any further. As already established in T 1041/21, it made no difference whether reference was made to said arguments or whether they were resubmitted without being adapted to the case.

(v) Case not fully prepared 

In J 3/20 the appellant invoked the principle of protection of legitimate expectations for the first time during oral proceedings before the Legal Board and alleged that it had trusted the content of a communication in a parallel case, which, however, it had already received in 2016. The Legal Board highlighted that the condition in Art. 12(3), first sentence, RPBA required a complete preparation considering all the relevant documents that were available. Thus, in its view, no reasons were apparent that could justify why the appellant had presented the new defence and the underlying facts for the first time at such a late stage of the proceedings, thereby counteracting principles of procedural economy.

(vi) Whether unsubstantiated objections have been validly filed 

On the admission of new, unsubstantiated objections, see T 321/21 (summarised in chapter V.A.4.2.3h)).