T 2719/19 is one of the decisions, the second being T 1513/17, having led to the referral and the decisions G 1/21 and G 2/22 of the EBA.
The application behind T 2719/19 is a divisional application from EP 1 755 674 leading to T 1513/17
In the present case, the ED refused the application for lack of N over D20 and D21 published in the priority interval. According to existing case law, the ED had considered that the priority was not validly claimed.
It is thus no surprise that the board in charge has set aside the decision of the ED and considered N given.
The present board noted that the EBA ruled that in the situation of the present case where the PCT application (here WO 2005/110481) with the filing date of 16.05.2005 was jointly filed by parties A (here R.P. Rother, H. Wang and Z. Zhong, as inventors and as applicants for the United States of America (US) only) and B (here Alexion Pharmaceuticals, Inc. and the University of Western Ontario for all designated States except the US), and claiming priority from an earlier patent application (here US provisional patent application No. 60/571,444) designating parties A as the applicant, the joint filing implies an agreement between parties A and B, allowing parties B to rely on the priority, unless there are substantial factual indications to the contrary, cf. G 1/21 and G 2/22, Order II.
The case has been remitted to the ED with the order to grant a patent based on the set of claims filed 08.11.2016, with the description and drawings to be adapted thereto, as necessary.
The reasons for remittal with the order to grant
The decision under appeal does not address any of the other requirements of the EPC, except for that of Article 123(2) EPC. The board noted “that the examining division did not refer to further need to examine the application, in case the priority were found to be validly claimed. In view of this, the appeal is allowable and, since no other objections have been raised in the decision under appeal or in the communications of the examining division leading up to the decision, the board sees no reason not to remit the case with the order to grant a patent based on the set of claims filed 8 November 2016, on which the decision of the examining division was based”.
It is interesting to note that the ED refused the application on the basis of two documents D20 and D21 cited in the opposition against the parent.
For the ED, the priority was, according to the existing case law, not validly claimed and therefore D20 and D21 were N destroying. It was thus not at all necessary for the ED to bring further objections into the procedure when it considered that the valid claims were in conformity with Art 123(2).
It thus appears somehow surprising that the board noted “that the ED did not refer to further need to examine the application, in case the priority were found to be validly claimed”. This was the reason for remitting, not for further prosecution, but with the order to grant.
Reasonable doubts that this move of the board was correct are permitted.
In view of all the literature cited in the opposition to the parent, it can be expected that the present divisional will also be opposed.
Similar situation in the opposition against the parent
In a communication under Art 15(1) RPBA of 23.11.2023, the board referred to G 1/21 and G 1/22. The board noted that, further to the lack of N of the MR, only objections under Art 56 were considered relevant by the OD and the subject-matter of AR1 was lacking IS over D21.
All the objections raised by the opponents in appeal were based on the “lack of entitlement to the “formal priority” and consequently on the disclosure in documents D20 and D21”.
In this communication of 23.11.2023, the board further noted that for this reason, there is no matter for remittal and hence “there are no obstacles to the order to maintain the patent according to the main request”.
Reasonable doubts that this is correct can also be raised here.
Change of paradigm needs to be taken into account
In view of the change of paradigm with respect to the validity of priority established in G 1/21 and G 1/22, it would appear correct and fair to remit the case to the OD for further prosecution, in order to see whether, in view of the numerous prior art cited by the opponents, other objections of lack of IS could result in a revocation or a maintenance in amended form.
The only explanation for this behaviour, in the parent and in the divisional, is that the board seems to want to get read of both cases as swiftly as possible.
This might at a glance be supported by the RPBA, but whether the RPBA can be applied in such a rigour after a change of paradigm with respect to the validity of a priority claim, remains to be seen.
On the other hand, anything increasing the production/productivity of the boards will be welcomed by the chair of the boards.
The OP for the parent, scheduled on 24.06.2024, promises to be interesting.