EP 2 558 029 B1 relates to systems for transcatheter implantation of a stented prosthetic heart valve.
Brief outline of the procedure
The OD decided that the patent as granted lacked N over D11 which was prior art under Art 54(3).
AR1 was offending Art 123(2) and the OD maintained the patent according to AR2.
Both proprietor and opponent appealed.
In a communication under Art 15(1) RPBA, the board provisionally explained that all higher ranking requests above AR5 were not allowable.
During OP before the board, the proprietor requested to insert AR 6′, 6 and 7 before AR5.
The proprietor’s point of view on the reordering of requests
A number of AR, having different distinguishing features, had been filed to address the opponents’ objections of a lack of N over prior art under to Art 54(3).
These requests had been grouped in accordance with the features added in comparison with the MR, such that converging requests had been numbered consecutively.
The numbering did not reflect an order of preference. The proprietor had established an order of preference of its claim requests only after the board’s preliminary opinion.
The request for reordering of the requests, which were all admissible per se, was not a change of the proprietor’s appeal case.
Not admitting the request for reordering would amount to forcing the proprietor to accept a non-preferred request, which would go against the principle of party disposition.
There was not much case law relevant to requests for reordering.
However, in all of the decisions in which such requests had been considered to be inadmissible amendments of the proprietor’s appeal case, reordering had been regarded as a procedural abuse going against procedural fairness.
The proprietor argued that the AR presented with its statement setting out the grounds of appeal had actually not been ranked in accordance with the proprietor’s preference.
The opponent’s point of view on the reordering of requests
The proprietor’s request for reordering of its requests is an amendment of its appeal case. Under Art 13(2) RPBA, this request should not be admitted in the absence of exceptional circumstances.
The proprietor did not put forward any such circumstances. Moreover, if the proprietor’s request was admitted, claim features divergent from the preceding higher-ranking requests, on which the board had not expressed a preliminary opinion, would have to be discussed.
This was detrimental to procedural economy.
The board’s decision
The board noted that, not only did the proprietor number the AR re-submitted with the statement setting out the grounds of appeal, but it also submitted further requests specifying an order in which the AR were to be considered by the board, i.e. an order of preference.
The reasons why the proprietor originally ranked the requests as it did are of little relevance. The fact remains that the proprietor had ranked the AR and that the proprietor requested a different ranking only after the communication under Art 15(1) RPBA.
The term “amendment” of the appeal case is used generally in the RPBA, without being assigned any restricting interpretation. Art 13(1 and 2) RPBA expressly refer to “any amendment of a party’s appeal case”.
Moreover, there is consistent case law, cf. T 2564/22 and the further decisions cited in point 2.1 of the Reasons thereof, with which the board agreed, that has established that reordering requests in the appeal proceedings constitutes an amendment of the proprietor’s appeal case.
When the admittance of a set of requests, with a given order, is an issue, it is up to the board to consider the admittance of the whole set or individual requests, or group of requests, in the order presented.
In the present case, AR 5 is an attempt to overcome the objection of a lack of novelty in view of D11.
AR 6, 6′ and 7 are attempts to overcome the same objection in an alternative and unrelated approach.
In its preliminary opinion, the board expressed the view that the approach of AR 5 was successful in overcoming the objection of a lack of novelty, and therefore there was no need to consider the lower-ranking requests.
The whole set of requests expressed the proprietor’s preference for the way the same objection was to be addressed. Changing this preference, as in the requested reordering, would have completely changed the procedure and, possibly, the outcome of the case.
In the OP, the proprietor argued that the board’s preliminary opinion had triggered its request. However, the provision of a preliminary opinion by the board is not an exceptional circumstance and could not justify any cogent reasons, as it was based on the assessment of objections previously presented by the opponent.
The board agreed with the proprietor inasmuch as considerations about procedural economy may play a role in the board’s discretion to hold the request inadmissible.
In the case at hand, however, the board noted that the admittance of the request for reordering would have shifted the discussion from a first line of requests, to requests which omit a given feature feature and are instead concerned with other features.
While the board provided a detailed preliminary opinion on the first line of requests, in the light of the positive preliminary conclusion on AR 5, it did not appear expedient to provide a detailed preliminary opinion on the lower-ranking requests concerned with a completely different technical aspect. This shift in the discussion caused by the proprietor’s late request for reordering would certainly delay the proceedings and therefore have a negative impact on procedural economy.
The proprietor’s argument that not admitting the request for reordering would go against the principle of party disposition was not accepted. The principle of party disposition is of no relevance for the application of the board’s discretion to hold requests inadmissible.
Not admitting a request for reordering does not force the proprietor to accept a patent in a version it does not want; it simply puts a limit on what the proprietor may obtain. In the case at hand, the proprietor certainly had the option to withdraw AR 5, but it chose not to.
For these reasons, the board has not admitted the proprietor’s request for reordering its requests under Art 13(2) RPBA.
Comments
It is a fallacy for the proprietor to pretend that the order of AR does not represent an order of preference. Any deciding body is obliged to deal with AR in the order given by the applicant/proprietor. Ignoring this order is tantamount to a SPV.
Next to T 2564/22 quoted by the present board, the question of reordering requests during OP before a board, has been subject to a series of publictions on the present blog.
The key message should by now be clear: reordering requests after entering appeal is in principle a no-go. It is an amendment to the proprietor’s appeal case.
On the procedure
It is rather surprising that the search established by the EPO did not reveal the prior art under Art 54(3), i.e. D11=WO 2011/126749, as both the patent and D11 share the same IPC class A61F2/24.
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