EP 2 828 218 B1 relates to “Method of lowering the error rate of massively parallel DNA sequencing using duplex consensus sequencing.
Brief outline of the case
The OD admitted the MR filed during OP, but held that in infringed Art 123(2).
The patent was revoked and the proprietor appealed.
The board decided that the OD had incorrectly exercised its discretion and the MR should not have admitted in the proceedings.
The board examined the merits of the MR and concluded that the it did infringe Art 123(2).
AR1-19 were not admitted under Art 12(4+6) RPBA.
The revocation was thus confirmed.
The board’s decision on the admissibility of the MR
The MR was filed as MR3A during the OP before the OD. The OD admitted the request into the proceedings, and the decision under appeal is based on it.
Although on account of Art 12(2) RPBA the MR3A automatically forms part of the appeal proceedings, the board held that the OD incorrectly exercised its discretion in admitting MR3A.
The board reminded that it may overrule the way in which a first-instance department exercised its discretion if it comes to the conclusion either that the first-instance department did not exercise its discretion in accordance with the right principles or that it exercised its discretion in an unreasonable way and thus exceeded the proper limits of its discretion and referred to the CLBA, V.A.3.4.1 b) and G 7/93, OJ EPO 1994, 775, Reasons 2.6.
Guidelines in force at the time of the decision
In accordance with the Guidelines in force at the time of filing of the relevant request, version in force in March 2023, the relevant criterion for deciding on the admissibility of late-filed amendments in opposition proceedings was that “if these amendments are not clearly allowable, cf. H-II, 2.7.1, now H-II, 3.5, they will not be admitted“, cf. E-VI, 2.2.3, now E-VI, 2.2.3.
In H-II, 2.7.1, the concept of “clear allowability” is explained as follows:
“late-filed claims will only be admitted into the proceedings if they are clearly allowable. This means that it must be immediately apparent […] that the amendments successfully overcome the objections without giving rise to new ones (prima facie assessment)”.
The Guidelines reflect the established case law of the boards on the criterion for admittance of late-filed requests to be applied in opposition proceedings, cf. CLBA, IV.C.5.1.7 b).
The application to the present case
According to the minutes, page 8, second paragraph, during OP, following the rejection of MR 2 because of added matter, the chair of the OD pointed out that the combination of features giving rise to the effect recited in step b) of claim 1 of MR2, such as the arrangement of primers indicated in paragraph [0023] of the application as filed, had to be present in claim 1 to meet the requirements of Art 123(2) EPC.
The proprietor then filed MR3A, which did not specify the arrangement of primers in claim 1.
According to the minutes, page 9, third paragraph, instead of considering whether it was immediately apparent that the amendments to claim 1 in MR3A successfully overcame the added matter objection to claim 1, the chair of the OD “noted that the deficiencies under Art. 84 and Art. 123(2) would have to be striking for the requirement of prima facie compliance of a request not to be fulfilled”.
In the board’s view, this indicates that the OD misconstrued the criterion of “clear allowability” and consequently applied it incorrectly, interpreting it as “clear non-allowability“.
Indeed, a detailed discussion on the merits of the issue of added subject-matter followed, and the OD concluded that MR3A contravened Art 123(2) because at least four features which according to the application as filed were inextricably linked to the features added in claim 1 had been omitted from claim 1 of MR3A. This confirmed that the OD applied wrong principles when admitting MR3A.
Finally, the OD’s reasoning for admittance set out in the decision under appeal, i.e. that the MR3A was “a bona fide attempt by P to overcome deficiencies under Art 123(2) ” further indicates that the OD misinterpreted the criterion of “clear allowability“.
In fact, “a bona fide attempt to overcome deficiencies“, while recalling the general admissibility requirement of R 80, falls short of the stricter requirement of “clear allowability” and is irrelevant to the exercise of discretion in admitting late-filed amendments.
The board concluded therefore, that in admitting the MR, the OD exceeded the proper limits of its discretion.
Comments
The decision of the OD to admit MR3A is rather surprising.
The OD first noted that MR3A did prima facie infringe Art 123(2), but considered as well that the filing of MR3A was nevertheless “a bona fide attempt by the proprietor to overcome deficiencies under Art 123(2)”. This kind of logic is difficult to follow.
It is abundantly clear that a late-filed request should only be admitted by an OD if it prima facie overcomes objections raised up to then during the proceedings. MR3A was not prima facie overcoming the objections under Art 123(2), even if other objections like Art 84 were overcome or not relevant.
The board is to be followed when it states that the criterion of “clear allowability” cannot be interpreted as being of “clear non-allowability”.
One of opponents considered that the filing of MR3A was an abuse of procedure. Difficult to say the contrary.
It seems that the OD, and its chaiman needs a refresher on the admissibility of late filed requests.
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