EP 3 103 443 B1 relates to the use of melatonin for the manufacture of a medicament for treating primary insomnia. EP 3 103 443 B1 results from a divisional application PCT/IL2002/000662 published under WO 2003/015690.
Brief outline of the case
The patent was revoked for lack of N over D15 of claim 1 as granted and of AR2-27. AR1 was not admitted by the OD. The proprietor appealed.
The board confirmed the decision of the OD.
The proprietor’s point of view
The proprietor submitted that the obiter dictum on sufficiency of disclosure in the appealed decision violated its right to be heard, because it deviates from the OD’s preliminary opinion, has a direct influence on the legal dispute and contains part of the finding on which the decision is based, i.e. claim interpretation.
The board’s decision
Art 113(1) provides that the decisions of the EPO may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments.
In this case, the appealed decision is based essentially on a given claim interpretation and an ensuing lack of novelty.
The decision is not based on the reasoning of insufficiency of disclosure given in the obiter dictum.
The proprietor’s right to be heard is hence not violated by the obiter dictum, irrespective of whether the proprietor had the opportunity to comment thereon or of whether the reasoning in the obiter dictum would be sufficient.
Contrary to the proprietor’s view, the obiter dictum does not contain part of the finding on which the decision is based, i.e. claim construction, since this finding on claim construction is part of the actual decision rather than the obiter dictum.
The proprietor’s argument that the obiter dictum is inappropriate due to its possible influence on separate legal disputes before national courts finds no support in T 1019/22, Reasons 33.3-33.6.
Comments
An obiter dictum is any general statement, either implicit or explicit, in a decision which does not constitute a ratio decidendi of said decision.
In T 1019/22 the board found the obiter dictum inappropriate owing to the fact that it contained a part of the finding on which the decision was based. T 1019/22 was commented in the present blog.
In T 1747/22, also commented in this blog, the board held that, as a matter of principle, parties cannot rely on orbiter dicta as if they were fully reasoned decisions.
Effect on pending litigation
In view of pending national proceedings, the appeal procedure was accelerated.
As the patent has been revoked, any possible effect of the obiter dictum in EPC contracting states in which the patent has been validated, has become irrelevant.
An obiter dictum can be useful in examination. I have doubts that it is really useful in opposition.
On the procedure
Although other non-patent literature was cited in the ESR, D15=Haimov I et al “Melatonin replacement therapy of elderly insomniacs”, Sleep, vol. 18, no. 7, 1995, pages 598-603, was not mentioned in the ESR.
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