The patent relates to a drive assembly for a drug delivery device and a drug delivery device incorporating such a drive assembly, in other words an injection pen.
The present patent claims an “internal priority” of 11.06.2010, i.e. EP 10165640 which has manifestly been withdrawn.
Brief outline of the case
All three opponents raised grounds under Art 100(a to c).
The OD revoked the patent for lack of sufficiency, cf. Art 100(b).
The BA revoked the patent for added subject-matter, cf. Art 100(c). The board held that claim 1 as granted consisted of an “artificial combination of cherry-picked features”.
The proprietor requested remittal in case additional reasons, not yet addressed by the OD, were to be discussed in connection with claim 1.
The request for remittal was dismissed.
A request for a decision on Art 100(b) or at least a positive statement about sufficiency was also dismissed.
The reasons for non-remittal
The board did not grant the proprietor’s request for remittal to the first instance for all issues concerning Article 100(a) and (c) EPC which were not discussed before the OD, as no special reasons presented themselves for doing so.
The objections under Art 100(c) and 123(2) were in the appeal proceedings from the beginning and were raised by the opponents 2 and 3 with their replies to the statement of grounds of appeal.
The objection relevant to the present decision concerns the same features as the objection under Art 83, i.e. a purely linearly moving piston rod being a screw thread directly engaged with the first drive part.
Under these circumstances, the board exercised its discretion under Art 111(1), second sentence, to decide on the opponents’ 2 and 3 objections raised under Art 100(c).
It is the boards’ settled case law that parties do not have a fundamental right to have their case examined at two levels of jurisdiction. Accordingly, they have no absolute right to have each and every matter examined at two instances.
Art 111(1), second sentence, leaves it instead to the board’s discretion to decide on an appeal either by exercising any power conferred on the department of first instance or by remitting the case to that department (Case Law of the BoA of the EPO, 10th edition, V.A.9.2.1).
Further issues
The board also dismissed the request of the patent proprietor to include additionally a decision about Art 100(b) or at least a positive statement in the decision to reflect the positive preliminary opinion of the board on this issue. For the board there is no legal basis for granting this request. On the contrary, R 102 implies that a decision should be reasoned in so far as the issues to be decided are concerned.
Contrary to the proprietor’s opinion the prohibition of reformatio in peius does not apply. The legal effect of the impugned decision was that the patent was revoked.
By confirming the decision of the first instance, even if on a different ground, the legal effect of the impugned decision remains the same, whereby the situation of the proprietor is the same as if they had not appealed.
The prohibition of reformatio in peius relates solely to the legal effect of an impugned decision; it does not apply to individual issues or objections. The board referred to T 1924/18 and T 1437/15.
The patent proprietor’s argument that in some national proceedings a revocation for lack of sufficiency before the EPO would be looked at differently than a revocation for added subject-matter is irrelevant because:
- the criteria for applying the prohibition of reformatio in peius relate to the situation of the appellant in the proceedings before the EPO,
- ii) a reference to such national proceedings is merely hypothetical, and
- iii) the present decision would in any case have no binding effect.
Comments
No right for two instances
The revocation by the board was not due to a new ground of opposition, Art 100(c) vs. Art 100(b) as the second ground was in the procedure from the beginning. Moreover it concerned the same features as those queried under Art 83 by the OD.
The board reminded rightly that no party, be it the opponent or the proprietor, has the right to two levels of decision. Remittal would not have helped anyway.
Prohibition of the reformatio in peius
The decision is interesting in that the board dismissed a request for a decision about Art 100(b) or at least a positive statement on sufficiency.
The granted EP has apparently be validated in AT BE CH CZ DE DK ES FR GR HU IE IT LI NL NO PL TR.
This might explain why the proprietor requested a positive decision on sufficiency or at least a positive statement in this matter. Since the patent was in any case revoked, this request was to no avail.
If the patent is revoked, it does not matter for whatever reason, it is dead as dead can be. This reminds me of the famous parrot scene in Monthy Pythons….
The prohibition of the reformatio in peius did certainly not apply, as the result was the same before and after the appeal.
Whilst T 1437/15 refers to G 9/91 (power to examine the opposition by an OD or by a BA), there is no reference in G 9/91 to the prohibition of the reformatio in peius.
The prohibition of the reformatio in peius has been dealt with in G 1/92 and G 1/99. T 1437/15 is cited in T 1475/18, but any reference to the prohibition of the reformation in peius is also absent in the latter. The reasons for quoting those decisions remain cryptic.
https://www.epo.org/law-practice/case-law-appeals/recent/t193287eu1.html
Comments
6 replies on “T 3287/19 – Revocation by the OD under Art 83 – Revocation by the board under Art 123(2) – No remittal – No prohibition of the reformatio in peius – No positive statement on Art 83”
Hallo Daniel, could you please explain the logic behind your following statement? Thanks a lot.
“The granted EP has apparently be validated in AT BE CH CZ DE DK ES FR GR HU IE IT LI NL NO PL TR.
This might explain why the proprietor requested a positive decision on sufficiency or at least a positive statement in this matter.”
Dear Dicker Panda,
I looked at the following link in the register under the following link:
https://register.epo.org/application?number=EP11724422
The patent has been granted on 11.10.2017.
I compared the list of designated states in the granted patent and the list of lapses during opposition.
On 11.10.2017, the patent lapsed in AL, CY, EE, FI, HR, LT, LV, MC, MK, PT, RO, RS, SI, SK, SM.
On 11.01.2018, the patent lapsed for BG; on 11.02.2018 for IS; on 09.06.2018 for GB, LU and MT.
I allowed myself to draw the conclusion that from the countries designated in the granted patent and in which the patent had not lapsed during opposition were countries in which the patent has been validated.
I might have been wrong in my assumption, but is the wish of the proprietor to obtain a positive decision on art 100(b) or a positive declaration which pushed me to have a closer look at the register.
Thank you Daniel. I am just wondering why the proprietor wishes to have positive statements in respect of sufficiency or what can be the motivation, because the patent would be anyway revoked. Is it possible that the proprietor would like to produce a referral to EBoA or file a petition for review? It is true that the party has no fundamental right of two levels of review. However from my point of view this only aims to give the board certain level of discretion, if it can be envisaged that even two levels of review would give rise to the same decision. In the present case, if the view of boards with regard to sufficiency is positive, then it means that the patent is revoked by different grounds. In such situation, it would have been more appropriate if the patent has been subjected to two levels of jurisdiction. Maybe the proprietor planed some further action as I mentioned above? I was just curious and would like to know how it brings you to the idea of checking the status of patent in different contracting states. Or in other words, does the status of patent in different contracting states play a role in the present case?
I have not looked into the specific validation countries or the relevant dates. However, perhaps conversion under Article 135 in one of the validation countries was possible.
Dear Dicke Panda,
I do not think that the proprietor was likely to produce a referral to EBA or to file a petition for review.
The case was discussed in OP before the board.
If the proprietor had intended to produce a referral to the EBA he should have formulated the question(s) he wished to be seen forwarded to the EBA during the OP, so that the board could decide whether it was accepting the corresponding request or not.
A petition for review would only be admissible by the EBA if the proprietor would have raised an objection under R 106 during the OP and this objection was dismissed by the board. Even if the petition would not be clearly inadmissible, it would most probably be not be allowable as the proprietor was heard on the different objection. A petition for review would in such a situation have little chance of success. From the 171 petitions for review which have been actually decided upon only 10 have led to a reopening of the appeal procedure and only 2 ended with a different decision after reopening.
Deciding whether to remit or not is really left to the discretion of the board.
In principle the boards remit when for instance they consider that an objection of lack of sufficiency, added-matter or novelty raised by an ED or an OD was not correct.
Like any rule it suffers exceptions and in the present case it was better to decide through as the problem of added-matter was manifest and concerned the same features as those queried by the OD under lack of sufficiency.
If the OD had decided on added matter instead of lack of sufficiency we would be at the same point now.
If the board considers that the patent can manifestly not be maintained, legal certainty for third parties can prevail over the wish of the proprietor of having its case subject to two instances. In the present situation it is more than likely that after the remittal the case would land again before the board, so it was better for all involved to stop as early as possible.
The possibility of a request for conversion under Art 135 is possible as correctly stated by “Anonymous”. But here again, such a request has to filed at the EPO and a fee has to be paid. The time limit for such a request is running and in three months from 12.01.2023 we should know. On the other hand, it might not be so easy for a proprietor to use such a converted national patent in a national infringement procedure.
Dear Daniel, thank you very much for your detailed reply. It is very helpful!