T 0213/85 - Grounds of appeal must address the contested decision - #88

Citation rank: 88
No. of citations: 59

In T 213/85 the opponent II failed to substantiate both his request for revocation of the patent in the Notice of Opposition, as well as his appeal against the first-instance decision holding the opposition inadmissible.

Already the rejection of the Opponent II's opposition as inadmissible was based on the fact that, when disputing novelty, the opponent did not properly substantiate his request. He did not demonstrate, within the opposition period, that the subject of the patent and the state of the art were identical, so that observations thereon could finally be made. From the filed evidence it was not possible to recognise any relationship between the product as claimed and the product therein described. In particular, it could not be deduced that they were identical.

The Notice and Grounds of Appeal suffered from a somewhat similar deficiency: it lacked substantiation in that the Grounds did not address the question as to why the contested decision was incorrect. Arguments were only provided as to why the documents and evidence on file were indeed novelty destroying.

Regarding admissibility of the appeal, the Board pointed out that it was established case law that grounds of appeal must be analysed in detail vis-à-vis the main reasons given for the contested decision. The grounds of appeal must specify the legal or factual reasons why the impugned decision should be set aside. The arguments must be clearly and concisely presented to enable the board (and the other party) to understand immediately why the decision is incorrect, and on which facts the appellant bases its arguments, without first having to make investigations on their own.

Since the Notice and Grounds of Appeal in the case at hand did not explain the reasons why the opposition decision holding the opposition as inadmissible was wrong. Consequently, also the appeal was inadmissible.

Comment:
While it is certainly useful to require the appellant to provide arguments as to why the first-instance decision was wrong, I always found this requirement to be in conflict with the possibility of the appellant to pursue in appeal amended claims. In my view, filing amended claims in appeal (i.e., not defending the claims held unallowable in the first-instance decision) amounts to tacidly acknowledging that the first-instance decision was correct. Nevertheless, entering appeal proceedings with amended claims, or amending claims at the appeal stage, is normally allowed.

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Headnote:

If an opposition has been dismissed on the grounds of insufficient substantiation and the grounds for appeal merely dispute patentability without elaborating on the admissibility of the opposition, the appeal is inadmissible for lack of adequate substantiation (in connection with T 220/83, "Grounds for appeal/Hüls", OJ EPO 1986, p. 249).

The full text of the decision can be accessed here.