EP 3 092 035 B1 relates to systems, devices, and methods for detecting and treating cardiac arrhythmias and, more specifically to multiple device systems, whereby the therapy activity of a first implantable medical device methods is communicated to another implantable medical device.
Brief outline of the case
The patent was revoked as the OD considered that claim 1 as granted and all claims of AR1-30 were infringing Art 123(2).
The OD decided further on AR1, 1B to 1F, 2A to 2F, 3A to 3F, 4A to 4F, 5 and 6, that is on 26 AR.
The board decided that claim 1 as granted did not infringe Art 123(2), but that claims 5 and 8 did.
AR1 suffered the same defect. AR 1A was not admitted pursuant to Art 12(6) RPBA. In AR 1A claims 5 and 8 were deleted.
AR 1B in which all claims but claim 7 as granted were deleted was admitted and the case remitted to the OD for further prosecution.
In this blog post we will deal with admissibility of AR 1A and 1B.
The dependent claims
The opponent invoked grounds under Art 100(c) against each of the dependent claims of the patent.
The board found that claims 2 and 7, as well as claim 3 and claims 4, 6, and 9, did, for various reasons, not infringe Art 123(2).
The proprietor’s point of view on the admissibility of AR 1A
AR 1A differs from the MR in that claims 5 and 8 have been deleted and claims 6, 7, and 9 renumbered accordingly.
The proprietor argued, that the amendments introduced merely amount to the deletion of two dependent claims, concretely of the only two for which the board found the grounds of opposition under Arti 100(c) to prejudice maintenance of the patent.
The proprietor also noted that there seemed to be some degree of divergence in the case law, as to whether or not Article 13 RPBA applies to the mere deletion of dependent claims.
The board’s decision on the non-admissibility of AR1A
AR 1A was only filed after notification of the communication under Art 15(1) RPBA and is, therefore, subject to the provisions of Art 13(2) RPBA.
No exceptional circumstances can be recognised in the fact that the board’s preliminary opinion with regard to the MR deviated from the view of the OD.
It is true, as argued by the proprietor, that the amendments introduced merely amount to the deletion of two dependent claims, concretely of the only two for which the board found the grounds of opposition under Arti 100(c) to prejudice maintenance of the patent.
Still, it cannot be concluded whether or not this request overcomes all the issues raised by the opponent, without giving rise to new ones, given that only the grounds brought forward under Art100(c) EPC have been examined so far, cf. Art 13(1) RPBA.
However, irrespectively of the divergence in case law, AR1a remains a request that was filed for the first time at a very late stage in appeal, and which, should have been submitted in the proceedings leading to the decision, but was not. That alone is sufficient reason for this request not to be considered, cf. Article 12(6) RPBA.
The board noted that objections under Arti100(c) were brought forward against all claims of the patent at the outset of the opposition proceedings. Hence, the proprietor should have submitted such a request at the earliest opportunity, namely, in reply to the notice of opposition.
The board however noted that its decision not to admit AR1A does not rule out that AR 1A could be admitted by the OD.
The board’s decision on the admissibility of AR1B
Claim 1 of AR1B is identical to claim 1 of the MR. AR1B differs from the MR in that dependent claims 2 to 6, 8 and 9 have been deleted and the remaining dependent claim renumbered as claim 2.
Since AR1B no longer comprises claim 5 or 8 of the patent and, for the reasons indicated above with regard to the main request, neither claim 1 nor claim 2 of this request defines subject-matter extending beyond the content of the original application, this request does not contravene Art 123(2).
Remittal
As the OD only decided on Art 123(2) and AR1B does not contravene Art 123(2), the decision was set aside and the case was remitted to the OD for further prosecution
Comments
This decision raises a plurality of questions.
It is correct that an objection under Art 123(2) was raised against claim 1 and all dependent claims as granted. It is as well correct that a board might not share the opinion of the OD, but requesting that AR 1A should have been filed in opposition is requesting the proprietor to have a crystal ball. He already had filed AR 1, 1B to 1F, 2A to 2F, 3A to 3F, 4A to 4F, 5 and 6, i.e. 26 AR in order to cope with the various objections of the opponent. .
With or without the RPBA as they stand, It is simply asking divinatory faculties from the proprietor to expect a contrary decision on claims 5 and 8 as granted. The RPBA have already front loaded the procedure in first instance, but this kind of attitude is anything but reasonable. It might well be that the RPBA have increased the efficiency of the boards, but they have certainly not increased the efficiency of the first instance.
The board did however accept AR1B in which said claims 5 and 8 were as well deleted. Other claims for which the board had no negative opinion related to Art 123(2) have also been deleted, leaving only claim 7 as dependent claim. Here again, it would have needed divinatory faculties from the proprietor to consider that claim 7 was indeed not infringing Art 123(2).
When on top the bord acknowledges that following remittal AR1A could be admitted by the OD, this defies any logic and shows the level of sophistication the boards have arrived at when it comes to procedural matters.
In the present blog, the diverging case law on deletion of claims has been often criticised. The present decision adds one stone to this wall of criticism.
Comments
Leave a comment