Key points
- Art. 12(3) RPBA requires a party's appeal case to be substantiated. This also applies to carry-over auxiliary requests that can not be held inadmissible under Art. 12(4).
- Carry-over requests are requests that were admissibly filed and maintained in the first instance proceedings. Such requests are no case amendment under Art 12(4).
- The Explanatory Remarks are imprecise when they state that "they will not be considered an amendment and, therefore, will be part of the appeal proceedings".
- Self-evident amendments need not be explained according to established case law. The present decision does not touch on that rule.
- The references of the patentee to certain letters in the first instance proceedings are no valid substantiation.
- As a practical rule of thumb, imagine (when drafting your Statement of grounds or appeal reply) that the file wrapper of the first instance proceedings is burnt, except for the minutes and the decision (Art.12(1)) and except for the claim requests and evidence (Art. 12(3)(s.3)). Letters of parties in the first instance proceedings will, however, be considered for the purpose of assessing whether submissions were "admissibly raised and maintained in the proceedings leading to the decision under appeal" under Art. 12(4)(s.1) and the entire first instance file wrapper will be considered for holding submissions under inadmissible under Art. 12(6)(s.1) RPBA by showing that the party filing the submission in appeal had one or more reasonable opportunities to file them in the first instance proceedings and made no avail of them or (tacitly) abandoned the submissions.
- As a further practical rule, attorney arguments probably should be presented in the SoG proper, not in an annexe (same for the appeal reply brief) (see T 0974/20).
- The Board in translation: "There is agreement that auxiliary requests 0, 0.1, 1 - 11 were filed in opposition proceedings and were not abandoned. However, this is not decisive in the present case, because the non-admission is not based on the provisions of Article 12(2), (4) RPBA, but on those of Article 12(3), (5) RPBA. The objections to the reference to documents and scarcity under Article 12(3) RPBA, as well as the requirement under Article 12(3)(b) RPBA to submit such documents, have already been addressed in Section 5.1.1 above and require no further comment."
EPO
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/2023/03/t-104121-need-to-substantiate-carry.html
