The patent relates to the field of biological and clinical testing, and particularly the imaging and evaluation of zygotes/embryos, oocytes, and stem cells from both humans and animals.
Brief outline of the case
Both opponents, which had originally requested revocation, appealed the interlocutory decision of the OD according to which the patent could be maintained in amended form on the basis of a MR.
The proprietor informed the board and the parties that it no longer approved of the text in which the patent was granted. Furthermore, it withdrew all its pending requests and indicated that it would not be filing any replacement text.
By decision T 990/16 the patent was thus revoked.
Joint opponents 2 stated that they did not withdraw their appeal and that they maintained their request for “the TBA to reach a decision on its Art 53 objection and its request for a referral to the EBA”.
The board held that in the absence of substantial matter on which the board has the power to hear the parties in this case, holding OP would serve no purpose other than to confirm that the board had no power to discuss the requested referral under Art 112(1,a) on Art 53.
The scheduled OP were cancelled.
The joint opponents 2 filed a petition for review and will be called “the Petitioner”
The petition for review was rejected as being clearly inadmissible.
The petitioner’s point of view
At the OP before the EBA, the Petitioner, for the first time, advanced an argument that Art 113(2) did not provide a basis for the revocation of a patent in the absence of an agreed text. This argument was advanced to support the Petitioner’s position that it was adversely affected by the Board’s decision to revoke the patent.
The Petitioner argued that the second “or” in Art 113(2) meant that because there was a “text submitted [to the EPO]“, that of the patent as granted, the Board had to make a decision on whether this text complied with the EPC, the “or” meant that it was irrelevant whether the proprietor still agreed to this text, so that the Board should have decided on the patent as granted even if the proprietor no longer agreed to it.
The Petitioner was thus adversely affected by the Board simply revoking the patent, rather than doing so after checking for compliance with the provisions of the EPC.
The Petitioner filed the following requests:
- Refund the petition fee;
- Appoint oral proceedings;
- Return the case to the Technical Board of Appeal to be re-decided after oral proceedings;
- Set out the questions that were asked to be referred to the EBA so that they find mention in the case law of the EPO;
- Condemn the procedure used by Boards of Appeal to shut down discussion on important points of law if the Patentee so desires it;
- Require the Board of Appeal to be reconstituted with entirely different members to reconsider the case; and
- Suggest to the newly reconstituted Board that the questions that were asked to be put to the Enlarged Board to be actually be put to the EBA.
The Petitioner did actually criticise decision G 1/04 and by a new referral, wanted the EBA to revise its position in matters of diagnostic.
The EBA’s position
The EBA noted first that the Board’s decision to revoke the patent was fully in line with the requests of the Petitioner during the appeal proceedings.
For the EBA, the Board was no longer in a position to consider the Petitioner’s Art 53 objections in the absence of a valid text.
Discussion on Art 53 and referral to the EBA under Art 112
For a board to refer questions to the EBA under Article 112 certain conditions need to be fulfilled. Amongst the conditions for a board to refer questions to the EBA under Article 112 is that the referral questions must not have merely theoretical significance. The EBA referred to G 3/98, para 1, T 547/08, para 4, last para.
Some further conditions were mentioned: the questions must be relevant for deciding the case in question (see T 2136/16, para 8.1 to 8.3); and that the answer to the referred questions must be essential for the board to reach a decision on the appeal in question (see T 154/04, para 2).
None of these conditions apply in the present case. The Board was able to revoke the patent without needing an answer to the referral questions submitted by the Petitioner.
On the basis of T 520/01, T 193/07 and T 1569/11, the EBA concluded that even if the OP had been held, there would have been no possibility of discussing the Art 53 objections, or a need to refer questions to the EBA.
Objection under Art 113(2)
Even if the EBA were to accept the Petitioner’s interpretation of Art 113(2), the Petitioner would be suggesting that an opponent can be adversely affected by an erroneous interpretation of the EPC that leads to the revocation of the patent.
The EBA disagreed, such a situation would not adversely affect an opponent, if the consistent approach to “adversely affected”, set out in the case law is followed. The EBA thus found this argument of the Petitioner unconvincing.
The EBA was thus of the view that the non-holding of the OP, the non-consideration of the Art 53 objection, and the non-referral of questions to the EBA cannot be considered to have resulted in any prejudice to the Petitioner that would lead to the Petitioner being adversely affected by the decision to revoke the patent within the meaning of Art 112a(1).
It cannot be disputed that, by no longer approving of the text in which the patent was granted, and withdrawal of all its pending requests, as well as without filing any replacement text, the proprietor avoided a discussion on Art 53. Such a tactical move is understandable and there is no reason for a board not to follow such an indirect request for revocation. .
By wanting to have his objection under Art 53 and a referral to the EBA under Art 112, the Petitioner actually wanted to influence case law in this matter. It was quite creative in its argumentation, but the EBA did not buy it.
Influencing case law in the matter at stake, diagnostics, might have been a legitimate aim, but since the patent was revoked, flogging a dead horse, has never brought matters forward.
As the Monty Python would say: [the patent] is dead as dead can be, and the board had no legal reason to nevertheless hold OP.
Sometimes proprietors only withdraw some requests. In the absence of a decision on such a request, a national court might never hear the position of the EPO on it. Such a tactical move is also understandable
Requesting the referral of specific questions to the EBA or to include certain declarations of a party into minutes which could be useful in national procedures failed to be accepted.
In T 1798/08 the opponent filed corresponding requests which were all rejected, cf. Reasons 4.1 and 4.5. In T 459/01, Reasons 6.2, and T 550/04, Reasons 5, such requests to include certain declarations were rejected.
In those cases an OP had taken place. In the absence of an OP due to an indirect request for revocation, there is no way that an opponent can obtain the opening of an OP and of a discussion he would like to have.