The patent relates to a sensor assembly, in particular a sensor assembly comprising electrochemical sensor elements and is particularly suitable for simultaneously measuring a plurality of different parameters, e.g. blood parameters.
Brief outline of the case
The opponent appealed the decision rejecting the opposition.
The proprietor requested as MR that the appeal be dismissed, and submitted sets of claims of new AR.
The board decided that claim 1 as granted lacked N over E1=US2004/0043477, whereby E1 was not mentioned on the ISR established by the EPO.
The decision of the OD was set aside and the case was remitted to the OD with the order to maintain the patent in amended form according to AR3 and a description possibly to be adapted.
The decision is interesting as it makes clear when submissions are unnecessary.
The proprietor’s point of view
The proprietor’s submissions were filed shortly before the OP before the board. The proprietor submitted that only document E12 was new (an expert opinion); the rest of the submissions did not constitute an amendment of its case, but merely said in different words what had been said in the reply to the appeal.
The proprietor argued for a different way of construing the terms in claim 1 of the MR, and maintained that its subject-matter was novel over document E1.
As its justification for filing the submission shortly before the OP, the proprietor submitted that it had been very surprised by the board’s preliminary opinion, which adopted the opponent’s interpretation of the “analyte sensor” and “through-going recess” of claim 1 of the MR.
It was furthermore also very surprising that the board, in its preliminary opinion, could not identify any difference of claim 1 over document E1, although the OD had identified several distinguishing features over E1.
The opponent’s point of view
According to the opponent, the submissions comprised new facts, arguments and evidence which amounted to a reworking of the respondent’s case. For this reason, it requested that the entire submission not be admitted into the appeal proceedings.
In its statement of grounds of appeal, the opponent disputed the way the features “analyte sensor” and “through-going recess” had been construed in the decision under appeal, and maintained that claim 1 of the MR lacked N over E1.
The board’s point of view
The board held that the proprietor had to expect that the board would accept either the argument of the opponent or that of the proprietor. As it turned out, in its preliminary opinion the board agreed with the opponent – one of the possible outcomes – which is therefore not a new or unforeseeable development.
Accordingly, the board considered that the proprietor’s surprise cannot be objectively justified as resulting from an unforeseeable development, and is merely subjective.
It is not therefore a suitable way to explain why the new facts and evidence were not filed and the new arguments made at an earlier stage, i.e. in reply to the statement of grounds of appeal, when the opponent should have made its appeal case, cf. Art 12(3) RPBA20.
The board concluded that the submissions are an amendment of the proprietor’s case, and that there is no justification for submitting it only in response to the preliminary opinion of the board.
The board furthermore agreed with the opponent that, to the extent that the submissions do not go beyond what has been said before with respect to claim construction, they are not needed: the proprietor can rely on its previous submissions.
Analogous considerations apply to that part of the submissions focusing on the admittance of AR 1 to 5.
Comments
The present case is a further illustration of the possible outcome of an appeal: the decision is confirmed or infirmed.
It cannot come as a surprise to a party if a board in its preliminary opinion takes a different stance from that of the department of first instance. The opinion expressed in the annex to the summons as provisional as it might be, can well take over the position of a given party.
Not filing requests at the latest when entering appeal, and waiting for the preliminary opinion of the board, is thus a dangerous game. As seen here it backfires.
Even under the RPBA valid before the present ones, case law made clear that a preliminary opinion by a board is not an invitation for further submissions and parties should file arguments, requests or prior art as early as required by the situation.
Submissions filed after a communication of a board should not merely say in different words what had been said in the reply to the appeal.
Such submissions are unnecessary. Any other kind of submission is likely to be considered as amendment to a party’s case and not admitted under Art 13(2) RPBA21.
On the procedure
The patent should not have been granted in the form it was. E1 and the patent have IPC/CPC classes in common in which the International Search was carried out.
Since the decision of the OD was set aside, the decision of the OD belongs to the 50%+ decisions in this case.
https://www.epo.org/en/boards-of-appeal/decisions/t180283eu1
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