EP 3 166 789 B1 relates to a propylene random copolymer for film applications.
Brief outline of the case
The opposition was rejected and the opponent appealed.
The board remitted to the OD for further prosecution in application of G 1/23.
Although the parties agreed during the OP before the board, that D11 was part of the prior art under Art 54(2), the opponent argued that the question of whether D11 could be considered the CPA should be discussed before the OD and not decided by the board. The proprietor requested that, should the board intend to remit the case to the OD, the board decide whether D11 could be considered the CPA.
The OD’s decision
The OD found that the data provided in D11 did not enable the skilled person to prepare the commercial product Borclear RB709CF disclosed in that document.
Therefore, in view of G 1/92 and T 1833/14, it concluded that D11 was not state of the art within the meaning of Art 54(2) and therefore irrelevant for the matter of IS.
D11, is a technical data sheet for the commercial product Borclear RB709CF from Borealis AG, the proprietor.
The board’s decision
In application of G 1/23, it was clear to the present board that the reproducibility requirement is no longer a valid criterion to assess whether a product put on the market before the date of filing of the opposed patent or technical information about such a product is state of the art within the meaning of Art 54(2).
Accordingly, the product Borclear RB709CF and the corresponding data sheet D11 are state of the art within the meaning of Art 54(2).
As in view of G 1/23, D11 is now considered to be prior art under Art 54(2) and therefore relevant for IS. It follows that a complete assessment of the opponent’s objection based on D11 as the CPA is necessary in order to decide on the case.
D11 as CPA
The proprietor justified its request to decide whether D11 was the CPA on the basis that the OD had already concluded that D11 was not the closest prior art.
Furthermore, the proprietor argued that if the OD were to decide that D11 was not suitable to be taken as the CPA, the case would be sent back to the board, which would lead to a “ping-pong” effect between the two instances and unduly prolong the proceedings.
Contrary to what the proprietor suggests, the conclusion that D11 could not represent the CPA was based solely on the fact that this document was found not to belong to the prior art within the meaning of Art 54(2). A full assessment of whether this document could be used as a starting point for the claimed invention was not carried out.
Moreover, G 1/23 sets out further considerations regarding the use of non-reproducible prior art in relation to IS and the board referred to Reasons 92, 93, 95 and 96.
As these considerations were not available to the parties and the OD at the time of the decision under appeal, the case should also be remitted to the OD so that it can consider whether D11 is suitable to be taken as the CPA in light of G 1/23 after giving both parties the possibility to take position on the application of the decision of the EBA to the present case.
Although the board should try to minimise the likelihood of a “ping-pong” situation between the first and second instances, this must be weighed against the parties’ interest in having their case examined by two instances, which would not be possible if the board had to consider the suitability of D11 as the closest prior art.
Under these circumstances, the board found it appropriate to remit the case to the OD in order to deal with the opponent’s objection of lack of IS based on D11 as document within the meaning of Art 54(2), including the question of the suitability of this document as the CPA.
Comments
We are in the presence of the first decision applying G 1/23.
It will have to be seen how the OD will handle the case. I do not envy its situation.
It is worth noting that in the statement of grounds of opposition the opponent argued that the product Borclear RB709CF discloses all the features of claim 1 as granted excepting the melting point that according to the patent ranges from 128 to 138°C while in Borclear RB709CF it is 140°C. No technical effect can be seen from this difference of melting point, i.e. 140°C vs 138°C.
D11 as CPA
If a board remits it is not to do the job of the OD, although other boards have taken some decisions on the substance before remitting. The apparent plea for two instances is a good way for the board to send the hot potato to the OD. Whatever happens before the OD, the board will get the hot potato back.
As G 1/23 is a decision which has raised more questions than answering them, it would have been better if the board would have given, even in an obiter dictum, an idea how of D11 can be used as the CPA.
It will also be interesting to see how the guidelines will be amended in the new version to come.
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