T 0153/85 - Admissibility of late-filed requests / Criterion of "clear allowability" - #12

Citation rank: 12
No. of citations: 212

T 153/85 is concerned with the criteria to be applied by Boards of Appeal when they assess admissibility of late-filed requests in appeal proceedings. T 153/85 developed the criterion of "clear allowability" for the admissibility of such late-filed requests.

The appellant in this case had filed an appeal against the decision of the Examination Division refusing his patent application for lack of inventive step.

Claim 1 of the Main Request (claims as granted) related to an amorphous thermoplastic polymer defined by its structure. A first auxiliary request was filed in good time together with the Grounds of Appeal, in which the structure for the thermoplastic polymer was more narrowly defined. A second auxiliary claimed the use of the defined thermoplastic polymer "for the production of moulded articles". Three weeks before oral proceedings the appellant filed a third auxiliary request which included further limitations compared to the second auxiliary request.

During the oral proceedings the appellant filed a new Main Request, which included further amendments and was reduced to three claims, in response to the findings of the Board during the oral proceedings.

The Board had to decide whether the very late filed new Main Request was admissible. They stated:

"The admissibility of the main request raises a point of principle. In relation to appeal proceedings, the normal rule is as follows: If an appellant wishes that the allowability of the alternative set of claims, which differ in subject-matter rom those considered at first instance, should be considered (both in relation to Article 123 EPC and otherwise) by the Board of Appeal when deciding on the appeal, such alternative sets of claims should be filed with the grounds of appeal, or as soon as possible thereafter." (reasons 2.1)

The Board considered Articles 108, 110 and 111 EPC setting out the Appeal procedure, and the pertinent case law relating to it. In particular, from Art. 108 EPC ("a written statement setting out the grounds of appeal") they concluded that the appellant is required to set out in his grounds of appeal the reasons why the appeal should be allowed (reasons 2.1). They also took into account that the appeal procedure is designed to ensure that as far as possible the oral proceedings are brief and concentrated, and that the appeal is ready for decision at the conclusion of the oral proceedings (ibid.).

From these considerations they concluded that

"... a Board may justifiably refuse to consider alternative claims which have been filed at a very late stage, for example during the oral proceedings, if such alternative claims are not clearly allowable."

In line with this statement the Board refused to admit the Main Request, because it was filed late during oral proceedings without any proper justification, and also because the Board was of the opinion that the claims did not satisfy Article 52(1) EPC.

Nowadays the criterion of "clear allowability" for the admission of late-filed requests is routinely applied in the proceedings before the Examining Divisions, Opposition Divisions and Appeal Boards of the EPO (see, e.g., Guidelines 2018, H-II, 2.7.1 for examination, and E-VI, 2.1, 2.2 for opposition procedure).

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Headnote:

1. If an appellant desires that the allowability of alternative sets of claims should be considered in an appeal, such alternative claims should normally be filed with the statement of grounds of appeal or as soon as possible thereafter.
2. When deciding an appeal during oral proceedings, a Board of Appeal may refuse to consider alternative claims which have been filed at a late stage, e.g. during the oral proceedings, if such claims are not clearly allowable.
3. When assessing novelty, the disclosure of a prior document must be considered in isolation. It is only the actual content of a document (as understood by a skilled man) which destroys novelty.
4. A prior document may on its proper construction (i.e. when its meaning to the skilled man is determined) incorporate part or all of a second prior document into its disclosure, by specific reference to the second document.

The full text of the decision can be found here.

Quotes from decisions citing T 153/85 can be found here.

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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J 0022/86 (Disapproval) of 7.2.1987 - #96

Rank: 96
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.