T 0220/83 - Substantiation of grounds of appeal - #38

Citation rank: 38
No. of citations: 110

T 220/83 is concerned with the question as to what are the minimum requirements regarding substantiation of the statement of grounds (Art. 108, 3rd sentence EPC), so that the appeal is still admissible.

The Opposition Division revoked the patent for lack on inventive step over a prior art document disclosing a rather similar chemical process, and suggesting the sole difference, within the same document.

The patentee appealed against that decision. The patentee submitted the following statement of grounds:

"When assessing the inventive step required to arrive at the process of the invention the Opposition Division did not in our view consider the statements made in US Patent No. 3 507 891 [the closest prior art document], column 3, lines 40 to 53; column 6, Example IV, Table 4, and column 7, Example VI, Table 6, as laid down in the Guidelines for Examination in the European Patent Office, Part C, Chapter IV, 9.8, (C2) and (d), on pages 48 and 49."

The opponent submitted that the statement of grounds were so inadequate that the appeal should be dismissed as inadmissible. The patent proprietors replied that their grounds for appeal, although brief, were comprehensible.

The Board noted that the admissibility requirements of Arts. 106, 107, 108, first and second sentences, and Rule 64 EPC1973 were met. However, the Board found it questionable whether the above-quoted comments can be regarded a statement of grounds in the sense of Art. 106, third sentence, hence, whether the  time-limit set by Art. 106, 3rd sentence EPC for submitting the statement of grounds was met.

The Board noted that the brief comments submitted submitted by patentee consisted essentially of references to passages of the closest prior art document and of the Guidelines. The Board confirmed that references to these passages were as good as stating these passages in the statement of grounds directly. The Board also noted that the cited passages related to certain parameters of the claimed process, and the cited passages of the Guidelines related to advantageous effects as an indicator of inventive step. One could thus speculate that patentee-appellant wanted to rely on an unexpected advantageous effect brought forward by the process parameters discussed in the prior art document at the cited passages.

The Board, however, stated:

"[T]he appellants gave no explanation within the appeal period of the kind of technical selection criteria involved, of what were to be regarded as the unexpected effects or of the facts giving rise to the alleged prejudice. Nor in the Board's view are facts evidencing an inventive selection that involved overcoming a prejudice at all obvious; they may at most be conjectured. Consequently, it is left to the Board and the parties to the appeal to ascertain for themselves any facts substantiating the claim to inventive step. This, however, is just what the requirement that grounds for appeal be filed is designed to prevent."

The Board found that appellants, when arguing inventive step in view of a prior art document, are obliged to analyse the document in detail when setting out the grounds for their appeal . The appellant cannot merely assert that the contested decision is incorrect and request that the patentability of the subject-matter denied by the department of first instance be reconsidered. Instead the appellants must state in their grounds the legal or factual reasons why the contested decision should be set aside so as to ensure that the appeal may be assessed objectively. This was not done in the present case.

As a consequence, the brief comments submitted by appellants were not accepted as substantively adequate grounds within the meaning of Article 108, third sentence, EPC.

The appeal was therefore dismissed as inadmissible.

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Headnote:

Grounds for appeal may not be confined to an assertion that the contested decision is incorrect but should state the legal or factual reasons why the decision should be set aside. It is not sufficient for the appellants merely to refer in general terms to passages from the literature showing the state of the art and to the Guidelines for Examination in the European Patent Office without making their inferences adequately clear.

The full text of the decision can be found here.


Quotes from 10 random decisions citing T 220/83 can be found here.

See also blog posts T 213/85 and J 22/86 on related topics.

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