Key points
- The OD decides to maintain the patent as granted. The opponent appeals. The question is whether the appeal is admissible, in particular whether the Statement of grounds is sufficiently substantiated.
- The Board: " the sole fact that a statement of grounds of appeal contains a repetition of arguments provided before the opposition division as such is not sufficient for the appeal to be considered insufficiently substantiated. "
- " The board is convinced that, in the present case, the first instance proceedings and more specifically the decision under appeal did not give rise in any way to the necessity for an adapted line of argumentation or a focused discussion of particular reasons given in the decision under appeal."
- " the board observes that the relevant parts of the decision under appeal contain a summary of the parties' arguments followed by the opposition division's opinion. The appellant's arguments provided in the statement of grounds of appeal are clearly consistent with the arguments that were taken into account by the opposition division."
- " In the present case, the decision under appeal did not contain anything that would have given the appellant reason to correct or adapt their line of argumentation or to expressly discuss certain views adopted by the opposition division. The repetition of the substantial arguments already put forward in the first instance proceedings therefore was a justified reaction to the decision under appeal in the specific case, which served the purpose of convincing the board."
- " point 15.2 of the reasons for the decision under appeal consists largely of a repetition of the parties' arguments, while the opposition division expressed their own opinion on novelty of the subject-matter of claim 1 merely in a single paragraph on page 6. An even shorter paragraph of the division's reasoning on novelty of the subject-matter of claim 4 is present on page 7."
- " The statement of grounds of appeal provided detailed and well-reasoned arguments on the points that were discussed in the decision under appeal, namely novelty of the subject-matter of claims 1 and 4 over D6 and inventive step of the subject-matter of claims 1 and 4 in view of D7. "
- " The board has therefore come to the conclusion that the requirements of Article 108 EPC in conjunction with Rule 99(2) EPC are fulfilled."
EPO T 1241/18
The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.
source http://justpatentlaw.blogspot.com/2022/03/t-124118-iii-repeating-arguments-was.html
