So far it has been the consistent case law of the Boards of Appeal of the EPO that the appellant may pursue two different strategies in appeal proceedings: either he/she may convince the Board of Appeal that the decision under appeal is wrong or he/she may take away the legal or factual basis of the decision under appeal by making new submissions. In particular, the appealing applicant or proprietor may file amended sets of claims in order to overcome the objections on which the decision under appeal is based. Decision T 2532/11 intends to put an end to this practice.

The Opposition Division had revoked the patent. The claimed subject-matter of two requests was found to lack novelty, the other requests were not admitted for formal reasons. The proprietor appealed. The statement of grounds of appeal contained one main and five auxiliary requests and a detailed reasoning why the limited claims were novel and inventive over the relevant prior art. In addition, the appellant submitted further evidence supporting his/her case in respect of inventive step. The respondent requested that the new requests not be admitted into the proceedings and questioned the admissibility of the appeal.

The Board of Appeal holds that the appeal is inadmissible. In its reasoning, the Board cites verbatim the relevant provisions of Article 108 EPC, Rules 99 (2) and 101 (1) EPC, as well as Article 12 (4) of the Rules of Procedure of the Boards of Appeal, all of which it does not need for its conclusion. Instead, the Board turns to the often cited decisions of the Enlarged Board of Appeal, G 9/91 and G 10/91, according to which the purpose of the appeal procedure is mainly to give the losing party the possibility of challenging the decision under appeal on its merits. According to Board 3.3.05, it is clear therefrom “that the appeal proceedings aim at contesting a decision” (emphasis in the original). In addition, the Board cites G 1/99 stating that “it is the appellant who in the notice of appeal determines the extent to which amendment or cancellation of the decision under appeal is requested” (emphasis in the original). The Board infers from this that the appeal proceedings are confined to the subject-matter of first instance proceedings and that the statement of grounds of appeal should at least discuss this subject-matter.

Applying these principles to the case at hand, Board 3.3.05 understands the statement of grounds of appeal to mean that the essential findings of the Opposition Division are not contested and thus concludes that this statement does not address the main grounds for revocation.

Finally, the Board raises the question “whether newly filed requests can be seen as implicit grounds of appeal, or in other words, whether there is a link between the decision and the grounds”. In this respect, the Board takes the position that “the procedural principle of free disposition does not extend to such a point that it should allow appellants to build a new case, disconnected from the case as it stood during the first instance proceedings, so as to render the decision under appeal purposeless. The EPC’s provisions do not give the appellants the power to set aside the decision under appeal of its own volition, which would obviously be the case if it had the opportunity to modify its requests beyond the subject-matter of the first instance proceedings” (emphasis in the original).

Whereas the Board does not deny the appellant’s right to file amended claims, it requires the appellant “to provide arguments in order to explain what are the issues in the decision it considers to be erroneous and provide arguments and evidence to support its view”.

Remarks
For a number of reasons, the decision cannot convince.

First, it has no basis whatsoever in the relevant legal provisions which simply require the appellant to indicate the reasons for setting aside the decision impugned. In an opposition case, this requirement is fulfilled in accordance with Article 101 (3) (a) EPC if the patent as amended and the invention to which it relates meet the requirements of the EPC.
 
Second, none of the citations of the decisions of the Enlarged Board of Appeal deals with the requirements of an admissible appeal. The citation from G 9/91 and G 10/91 is concerned with the extent of examination of grounds of opposition in appeal proceedings and the citation from G 1/99 is concerned with the question to which extent the non-appealing party may file a request going beyond the subject-matter defined by the appellant’s request. Thus, both citations deal with the scope of examination in appeal proceedings initiated by an admissible appeal. Neither the citations as such nor their context justify the conclusion that a Board of Appeal can only examine subject-matter already examined in the first instance proceedings.

Third, the Board omits to deal in detail with the consistent and actually relevant case law (Case Law of the Boards of Appeal, 7th ed. 2013, IV.E.2.6.5.b). Whereas decision T 934/02 is mentioned, its rationale is not discussed. In that decision, the Board saw “no reason why the appellant (patent proprietor) in its appeal should be obliged to deal with the reasoning in the Opposition Division’s decision when such reasoning no longer applies in view of the amended claims. An appeal may be substantiated by filing amended claims which deprive the contested decision of its basis. It is therefore not necessary, and would also be pointless, for the purposes of adequately substantiating an appeal, to file grounds in support of a version of a claim that the appellant (patent proprietor) no longer defends in the appeal proceedings”. There is no reason why a party having lost in first instance proceedings should be forced to insist on its position if it comes to the conclusion that it is no longer in its interest to do this, be it that the decision of the first instance appears convincing, be it that a more restricted protection turns out to meet the party’s economic interests. Any mock attacks against the decision under appeal, just for the purpose of making the appeal admissible, would amount to a superfluous burden in the appeal proceedings. This approach has remained uncontested in numerous decisions until T 2532/11.

Decision T 2532/11 is an extreme example of a tendency in the case law of the Boards of Appeal putting more and more emphasis on procedural aspects at the cost of the substantive examination of appeal cases. This deserves to be studied in more detail. In any case, the Boards have to comply with the Convention and have to respect certain limits when changing the character of appeal proceedings. In accordance with Article 111 (1), Sentence 2, EPC, the Boards may exercise any power of the department which was responsible for the decision under appeal. Alternatively, the Boards may refer the case back to the departments of first instance. This provision can only be understood on the background that new facts, evidence and requests may be submitted in appeal proceedings, with the proviso that late submissions may be disregarded. This does not and cannot mean, as suggested by Board 3.3.05, to “give the appellant the power to set aside the decision under appeal of its own volition” (emphasis in the original). Rather the admissible and allowable appeal results in the EPO’s obligation to set the impugned decision aside.

This is expressly addressed for ex parte appeal proceedings in Article 109 (1) EPC obliging the department of first instance to rectify its decision if amendments are submitted meeting the objections on which the decision under appeal is based. T 2532/11, making no relevant distinction between appeals in grant and in opposition proceedings, does not address this. The discretionary decision whether new submissions in appeal proceedings can be disregarded requires considering all relevant circumstances and balancing the interests involved. Thus, it is a matter of substantive examination which is not to be anticipated in the examination as to admissibility. The Board’s observation that the provisions of Article 114 EPC are of limited application in opposition proceedings may appear ironic to those experiencing the practice of some Boards of Appeals to raise of their own motion objections never raised by the Opposition Division or the opponents. The Enlarged Board of Appeal has approved such conduct even during oral proceedings and without allowing the proprietor a full opportunity to react (cf. Wegner and Hess, epi Information 1/2014, 32). Such contradictory tendencies imply the danger that a fair balance is lost between the possibilities of the opponent to attack the patent and the proprietor to defend it.

It is to be hoped that other Boards of Appeal will put the legal principles right and confirm the hitherto uncontested practice that an appellant can rely on new requests submitting relevant arguments that these requests overcome the objections on which the decision under appeal is based without being obliged to contest the correctness of the impugned decision.