Key points
- This decision was issued in March 2020, but the Enlarged Board in July 2022 rejected the petition for review concerning it. (Entry in the EP phase in 2007, incidentally).
- In this opposition appeal, the opponents appeal. "With the reply to the appellants' statements of grounds of appeal, the respondent [patentee] submitted a main request and auxiliary requests I to XVIII. The main request corresponded to the request considered allowable by the opposition division. Auxiliary requests I to XVIII were filed for the first time in the appeal proceedings."
- The phrase "were filed for the first time" may require some analysis but seems not essential for the Board's reasoning.
- The patentee argued that: "essentially the same claim requests had been filed before the opposition division and had been substantiated then, being aimed at overcoming the novelty objections with regard to document D1."
- The interesting issue is the admissibility of Auxiliary Request X.
- The Technical Board, on the admissibility of Auxiliary Request X: "The case law of the Boards of Appeal has consistently held that this requirement [of Article 12(2) RPBA 2007] is not met if claim requests are not substantiated, except if the amendments made are self-explanatory. It has also held that requests that are not self-explanatory are to be considered as submitted only on the date of their substantiation "
- "[The appeal procedure is] a distinct procedure in which any facts, evidence or arguments considered relevant must, if need be, be resubmitted (see G 10/91, OJ 1993, 420; G 9/92 and G 4/93"
- "Since the respondent's reply to the statements of grounds of appeal contains no explanation relating to the auxiliary requests, beyond the statement that "all of these requests address the newly raised objections against claims 20 to 22", the board can only hold that the amendment made to claim 1 in auxiliary request X was not substantiated therein. In view of the above mentioned case law (see point 19.), it is not relevant whether or not the claim requests were substantiated in the proceedings before the opposition division. It remains to be decided whether or not the amendments made to claim 1 are self-explanatory as suggested by the respondent (see section XXI. above)."
- " Contrary to the respondent's position, it was not self-explanatory which objections were addressed by each of the numerous amendments of claim 1 of the request (see section XI), i.e. whether it was lack of novelty or inventive step or any other objection raised in the statements of grounds of appeal against claim 1 of the main request (see sections IV and V) nor why the amendments would overcome any of these objections."
- See, similarly, T 0238/19.
EPO T 0308/17
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/2022/08/t-030817-need-to-substantiate-carry.html
