4.12.5 Unsubstantiated requests

In a number of decisions, it has been observed that unsubstantiated auxiliary requests cannot be considered in appeal proceedings.

Under Art. 12(2) RPBA 2007, the statement of grounds of appeal and the reply must set out the parties' complete case. In particular, it must be set out why it is requested that the decision under appeal be amended or upheld. Taken as a whole, the RPBA make it clear that appeal proceedings are primarily written in nature, with Art. 12(2) RPBA 2007 requiring that the parties' complete case be submitted at the outset. The purpose of this provision is to ensure fair proceedings for all concerned and to enable the board to start working on the case on the basis of both parties' complete submissions. In inter partes proceedings, both rights and obligations should be divided equally among the parties so that the board can perform its independent judicial function (T 217/10, T 1732/10, T 1890/09).

In T 2598/12 it was stated that there was no time bar to the requirement following from Art. 12(2) and (4) RPBA 2007 that a request filed during appeal proceedings must be properly substantiated. Consequently, this requirement applies, mutatis mutandis, to new requests filed in response to a communication of the board.

In T 217/10 the board observed that it was not only for the appellant to substantiate its appeal but equally for the respondent to show at an early stage why it considered that the objections raised in the grounds of appeal did not withstand scrutiny. If auxiliary requests were submitted, reasons usually had to be given to explain how they overcame those objections (at least if this was not obvious from the amendments made). In the case in question, the auxiliary requests had not been accompanied by any reasons, so it was not immediately apparent to the board how they could overcome the objections raised. The board therefore refused to consider them (see also T 420/14).

In T 1732/10 the board held that not reacting in substance to the appeal of the opponent, but waiting for the board's preliminary opinion before any substantive reaction is filed, is regarded as an abuse of procedure. This is all the more so if the substantiation for all the requests, which were filed after summons to oral proceedings have been sent, is filed only shortly before the oral proceedings before the board. Such requests – which are not self-explanatory – are considered by the board as submitted only on the date of their substantiation. Such very late requests are contrary to procedural economy, do not take account of the state of the proceedings and cannot be reasonably dealt with by the board without adjournment of the proceedings or remittal to the department of first instance, contrary to Art. 13(1) and 13(3) RPBA 2007.

Auxiliary requests filed by proprietors with their statement of grounds of appeal or reply could not be admitted if they neglected also to specify why the contested decision should be amended or the patent maintained (T 2355/14).

In T 1836/12 the board held that filing new requests without addressing all the points raised in the annex to the summons to oral proceedings made the procedure inefficient, contrary to the principle of procedural economy. Simply filing unsubstantiated requests did not overcome any objections that had already been raised by the board in the annex to the summons or that were to be expected in the light of the contested decision. Given the lack of substantiation, the board had informed the appellant well in advance that the admissibility of these new requests would have to be discussed at the oral proceedings and that they would be considered filed only on the date of their substantiation (T 1732/10).

In T 1784/14 the board summarised in its catchword that if no substantiation is provided, at any stage during the appeal proceedings, for claim amendments which are not self-explanatory, the requests containing those amendments may be considered not validly filed (following T 1732/10). In T 2288/12 the board confirmed that requests that are not self-explanatory become effective only at the date on which they are substantiated. See also T 2101/14.

In T 568/14 the board acknowledged that auxiliary requests, if filed without any explanation, may be deemed inadmissible or not validly filed (see e.g. T 253/06). This does not however apply if no explanation as to why amendments are filed is needed because they are self-explanatory. This condition was met in the present case.

In T 687/15 appellant merely stated that the new requests represented "fall back" positions. This statement did not serve to place the board and the other parties in a position to understand the rationale behind these requests. On the contrary the onus was placed in the board and the respondents to assemble, or derive the case being made themselves and develop appropriate responses. This is contrary to the requirements of Art. 12(2) RPBA 2007.

In T 1533/13 the board had to deal with the admissibility of late-filed claim requests which were filed roughly one month prior to the oral proceedings. These requests were based on claim requests already filed without explanation with the statement of grounds of appeal. The board stated that the appellant had filed ten auxiliary requests with the statement of grounds of appeal, containing various parameters, and had provided no explanation at all in the statement of grounds of appeal as to why all these parameters had been introduced and which of the opposition division's objections was therefore overcome. The mere filing of amended claims did not exonerate the appellant from the task of expressly specifying in the statement of grounds of appeal the relevance of the amendments for overcoming the objections on which the decision under appeal was based (T 933/09).

In T 2077/13 the auxiliary request filed in response to the summons to oral proceedings corresponded to an auxiliary request already filed in opposition proceedings and dealt with in the contested decision. The appellant argued that the auxiliary request was no surprise. However, filing this request that was previously known to the parties at a late stage of the appeal proceedings does not exempt the appellant from its obligation to provide at least some substantiation with regard to the allowability of this request, in particular since this request was found not allowable by the opposition division.

On this topic see also T 1890/09, T 1836/12, T 1134/11, T 162/12, T 122/13 and T 964/13.

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