The application relates to “FC-region variants with improved protein A-binding” and the applicant is Hoffman-La Roche. The appeal is dealt with by board 3.3.04.
Brief outline of the case
The application EP 15 700 545.5 was refused as the applicant disapproved the text of the patent proposed by the ED in the communication under R 71(3).
In the communication under R 71(3), the ED deleted in pages 89, 93 claim like clauses were deleted, pages 90, 91 were completely deleted for the same reason, all with reference to the Guidelines F-IV, 4.4. Page 92 was completely deleted due to an inconsistency between the description and the claims under Art 84. In page 130 a generalising statement was deleted as it rendered the scope of the claims unclear under Art 84.
The applicant appealed the decision.
The board’s position
In a communication under Art 15(1) RPBA20, the legal member of the board 3.3.04 suggested a referral to the EBA. In this communication, it is noted that the case law in matters of adaptation of the description is diverging. Reference was also made to opposition proceedings in which Art 84 was not a ground of opposition and that according to G 3/14, Art 84 can only be invoked in case of amendments of the claims. The question at stake could thus also have an influence on opposition proceedings. The legal member would prefer to limit the questions to ex-parte proceeding. .
T 433/97 was also quoted with reference to Point 4 of the reasons in which the board held that “The question whether a given embodiment, be it described in the patent itself or elsewhere, falls under the extent of protection conferred by the patent in the sense of Article 69 EPC does not by itself concern a requirement of the Convention to be met by the patent and by the invention to which it relates, and it has not therefore to be decided as such by the Board.”
In Point 1.5 of the communication under Art 15(1) RPBA20, the legal member of the board invited the applicant to provide its observations as a referral would delay the grant of the patent.
The legal member also went on the legislative history of Art 84 as it was decided in 1973.
The applicant’s position
The applicant is, without any surprise, in favour of a referral.
The applicant considers that the questions at stake should not be limited to any specific proceedings.
The applicant even drafted some questions to be referred to the EBA.
It is thus highly likely that a referral to the EBA will come in the future.
I am fully aware that the legal member of the board acts in the name of the whole board, but it is clear that the crusade against the adaptation of the description stems mainly from one person.
It will thus be interesting to see how the questions will be formulated and what be the answer of the EBA.
As the potential questions might have a direct influence on the grant of patents, any amendments to the description by an ED under F-IV, 4.4 and Art 84 (support), will delay the procedure not only in the present case, but in lots of cases.
It will thus be interesting to see whether the grant procedure will be stayed.
In case of a stay, it would imply a drastic drop of the production of final actions by examining and opposition divisions, even from the boards. It is not sure whether the upper management of the EPO and of the boards will appreciate being put in such a situation.
One way for the EBA to avoid a dip in the production of “products” of the EPO could be to consider the referral as not being admissible. After all the position of the legal member of board 3.3.04 appears to be a rather minority opinion within the boards, as there are only very few decisions of the kind of those of board 3.3.04.
Another outcome of the referral could be a confirmation of the Guidelines F-IV, 4.4 and the way the majority of the boards deal with the support of the claims by the description under Art 84 (support). This would crush the hopes of lots of representatives in this matter.
Whatever happens, the EBA will have to decide rather rapidly.