The Non-Commutative Algebra of Inventive Step - T 1649/10

The decision T 1649/10 of the Technical Boards of Appeal raises the bar for the admissibility of an appeal under Articles 106 to 108 EPC and Rule 99 EPC. Rule 99 EPC relates to the "Content of the notice of appeal and the statement of grounds".

Rule 99(2) EPC stipulates: "In the statement of grounds of appeal the appellant shall indicate the reasons for setting aside the decision impugned, or the extent to which it is to be amended, and the facts and evidence on which the appeal is based".

In the case at issue, the patent had been maintained in amended form (with added features from the specification) by the opposition division. Claim 1 as granted had been judged to lack inventive step starting from a document D10 as the closest prior art in combination with a document D4. In the grounds of appeal, the appellant argued that claim 1 as granted was indeed non-obvious starting from D4 as the closest prior art in combination with D10.  No reason why D4 would be a more appropriate starting point than D10 was given.

D10 combined with D4 or D4 combined with D10 - does it make a difference?

According to the Board, it does. The appeal was rejected as inadmissible because the reasons of the impugned decision (obviousness starting from D10) were not properly addressed. The claim as maintained by the opposition division was considered to lack clarity and the patentee having lost its status as appellant did not find a way to overcome this problem without colliding with the prohibition of reformatio in peius. The patent was completely revoked.

This following the decision T 2077/11 , this decision highlights the importance to specifically address the reasons given in the impugned decision and to not only re-iterate one's own view of the case. While I personally think that this decision overstresses  the requirements of Rule 99(2) EPC, it should serve as a warning when drafting grounds of appeal.