Friday, 26 June 2009

EPO appeal "invalid for insufficiency"

I've just come across (via PLC's IPIT & Telecommunications weekly email) the EPO Board of Appeal decision in Pipe for filling bottles/Gallardo Gonzalez, T 1581/08 - 3.2.07, 3 April 2009, a curious little decision in which the Board of Appeal refused to admit an appeal because it wasn't supported by proper grounds of appeal. Or, to put it another way, it's not just patents that can be invalid for insufficiency.

According to the Board, sufficiency of grounds of appeal is not a question of form but also one of substance: the mere existence of some argumentation in a document carrying the heading "Statement of the Grounds of Appeal" does not automatically meet the statutory requirement, even if it clearly related to the substance of the decision appealed against. As the Board said in para 3 of its decision:
"... Sufficiency of grounds of appeal is not a question of form, but of substance. The mere existence of some argumentation and carrying the heading "Statement of the Grounds of Appeal" or "Grounds" does not automatically pass the threshold of Article 108 EPC, even if clearly relating to the substance of the impugned decision .... On the other hand, sufficiency is also not a question of volume. There is no minimum requirement as to the length or the fullness of detail of the argumentation which is necessary for an admissible appeal. In this context a distinction is to be drawn between insufficiency for the purposes of admissibility and insufficiency as far as the persuasiveness of the grounds is concerned which - if the arguments are not convincing - results in the dismissal of the appeal...

According to the established case law of the Boards of Appeal the grounds for appeal should specify the legal or factual reasons on which the case for setting aside the contested decision is based. The arguments must be clearly and concisely presented to enable the Board and the other party or parties to understand immediately why the decision is alleged to be incorrect, and on what facts the appellant bases his arguments, without first having to make investigations of their own ...

Further, to be sufficient for the admissibility of an appeal the grounds must be analysed in detail vis-à-vis the main reasons given for the contested decision...

If no or insufficient relationship between the two can be established, the Board considers that the appeal is inadmissible.
The bottom line is that representatives of clients in appeal proceedings should check that the grounds for appeal do indeed actually specify the legal or factual reasons on which the case for setting aside a contested decision is based. These grounds should be analysed in detail in relation to the main reasons given for the contested decision.

In this case, said the Board, there was no analysis of the technical features of the claims -- there was just a vague reference to an unspecified document as prior art, so the grounds of appeal were insufficient.


Anonymous said...

This doesn't appear to be a decision to strike fear into practitioners that Appeals are going to routinely be rejected on this grounds.

A quick read of the appeal documents reveals them to be barely penetrable, and certainly not clear enough base a re-consideration of the opposition division's decision on.

Hopefully the submissions are those of the opponent themselves, and not the attorney, otherwise it is a poor advert for the quality of European Attorneys.

Anonymous said...

Read the documents yourself on epoline and draw your own conclusions. It is the first time I have seen Grounds for Opposition filed in all three official languages by the same opponent.