Number of citations: 55
T 22/86 deals with the question of how much reasoning is required for complying with Art. 108 EPC, so that the appeal is admissible.
In the case at hand, the applicant had failed to respond properly to a communication under Rule 51(4) EPC1973 (nowadays Rule 71(3) EPC) by paying the fees for grant and printing, and by filing a translation of the claims. The application was consequently refused.
Applicant filed a Notice of Appeal, which (in addition to setting out information as required by Rule 64 EPC) contained the following statement: "It is requested that the application be restored to enable further processing to be carried out with the object of securing the grant of a patent." The appeal fee was duly paid. No further statement was filed within the four month period provided by Article 108 EPC.
In a subsequent letter, the representative of the applicant argued that the above-quoted statement quite clearly represented the Grounds of Appeal and that the appeal therefore was admissible.
In considering whether the appeal complied with Art. 108 and thus was admissible, the Board stated:
"2. The requirement of Article 108 EPC for "a written statement setting out the grounds of appeal" is clearly in addition to the requirement for a "notice of appeal". The requirements for a notice of appeal are set out in Rule 64 EPC, and are essentially formal in nature. In contrast, the requirement for a written Statement "setting out the grounds of appeal" is clearly not merely formal, but involves a presentation of the Appellant's case. That this was intended by the Convention is also supported by the fact that an extra two months is allowed for the filing of the Statement. The requirement of Article 108 EPC is for a statement which sets out the substance of the Appellant's case; that is, the reasons why the appeal should be allowed and the decision under appeal should be set aside. [...]"The Board remarked that, in general, the less reasoning that a statement of Grounds contains, the greater will be the risk that the appeal will be rejected as inadmissible for non-compliance with Article 108 EPC. They also stated that
"In a wholly exceptional case such as the present, it may be immediately apparent to the Board of Appeal upon reading the decision under appeal and the Statement of Grounds of Appeal that such decision cannot properly be supported, even though the grounds contained in such statement can fairly be described as minimal. This is the situation in the present case [...]"As a consequence, despite the lack of proper reasoning as to why the contested decision was wrong, the Board regarded the appeal admissible.
As pointed out by the Board, a situation in which an appeal is admissible without a filing of proper Grounds of Appeal is very exceptional. Therefore, decision T J 22/86 is more often cited for laying down the minimum requirements regarding Grounds of Appeal for holding the respective appeal inadmissible. For example T 574/91 cites J 22/86 as follows:
"[...] according to the established jurisprudence of the Boards of appeal, it would have been essential that the Statement of Appeal set out the specific factual and legal reasons on which the Appellant relied (e.g. J 22/86, OJ 1987, 280 and T 432/88 of 15 June 1989, not published in the OJ EPO)." (quote from T 574/91).The situation in which no Grounds of Appeal are filed and the appeal is nevertheless admissible must be regarded as being truly excpetional.
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Headnote I:
1. In order to comply with Article 108 EPC, the written statement setting out grounds of appeal should set out fully the reasons why the appeal should be allowed and the decision under appeal should be set aside. Exceptionally, where the written statement does not contain such full reasons, the requirement for admissibility may be regarded as satisfied if it is immediately apparent upon reading the decision under appeal and the written statement that the decision should be set aside.
The full text of the decision can be accessed here.
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