EP 2 677 029 B1 relates to “Methods for the manufacture of proteolytically processed polypeptides”. It is base on a divisional application of EP 2 524 963 A1.
Brief outline of the case
The set of claims of AR 2 in appeal, differed from that of the MR in that claims 2+4+6 had been deleted, and the set of claims of AR 3 differed from that of AR1 in that claims 2+4+5 had been deleted.
AR2 and 3 were not admitted by the board and the patent was revoked by decision T 2229/19.
The proprietor filed a petition for review.
OP were held before the EBA in the composition under R 109(2,a), i.e. with two LQM and one TQM.
The petition for review was rejected for being clearly inadmissible and clearly unallowable, and no fundamental violation of Art 113(1) was discernible.
We will concentrate on the non-admissibility of AR2 and 3
The proprietor’s point of view
The proprietor contended that the board based the decision under review on grounds on which the proprietor had had no opportunity to comment, and more specifically that the Board’s decision not to admit AR 2 and 3 into the proceedings was based on a novel interpretation of Art 13(2) RPBA, and on a finding by the board that the claims of AR 2 and 3 did not overcome the insufficiency of disclosure which had been found by the OD.
For the proprietor, the board decided to depart from prior case law and imposed a novel test for Art 13(2) RPBA from that previously used.
The approach adopted by the board was contrary to established practice of the boards of appeal, which consistently permitted dependent claims to be deleted from patents whenever such deletion overcame all issues discussed and where the deletion did not cause a change in the focus of an appeal.
The Enlarged Board’s decision
For the EBA, the deciding board set out its reasoning for the decision not to admit and consider in the appeal proceedings AR 2 and 3 under Art 13(2) RPBA.
The EBA reminded that the right to be heard does not go so far as to impose a legal obligation on a board to disclose in advance to the parties how and why, on the basis of the decisive issues under discussion, or at least those foreseeable as the core of the discussion, it will come to its conclusion. This forms part of the reasoning given in the written decision. The EBA referred to R 8/17, Reasons 15 and 16; R 16/13, Reasons 3.3; R 8/13, Reasons 2.2; R 15/12, Reasons 5; R 1/08 Reasons 3.1).
As derivable from the minutes of the OP before the deciding board and in line with the proprietor’s submissions, the issue of admittance of AR 2 and 3 was discussed with the parties at the OP, having regard to the requirements of Art 13(2) RPBA. The parties were thus heard on the issue of admittance of AR 2 and 3.
The EBA noted that the board held in its decision that the deletion of the dependent claims in AR 2 and 3 did not result in claims which were clearly allowable.
In the case that led to the petition for review, the board held that the filing of AR 2 and 3, even if only dependent claims were deleted, represented an amendment to the petitioner’s appeal case within the meaning of Art 13(2) RPBA, and concluded that admittance was subject to the board’s discretion.
The proprietor, when reading the reasoned written decision, may subjectively have been surprised that the aspect of overcoming the issue of sufficiency of disclosure was taken into consideration by the Board when deciding on the admittance of AR 2 and 3.
However, on an objective basis, it could not have come as a surprise that the board, when deciding on the admittance of AR 2 and 3 in application of Art 13(2) RPBA, additionally took into account aspects set out in Art 13(1) RPBA.
It lies within the concept of the “convergent approach“, that criteria which are explicitly mentioned in a provision governing an earlier stage of the proceedings, “level” continue to be relevant for the subsequent stage(s), in addition to those explicitly provided for that later stage.
At the third level of convergence, the board may also rely on criteria applicable at the second level of the convergence.
The EBA reminded that, review proceedings cannot be based on an incorrect application of substantive law by a board, or on procedural defects which are not of a fundamental nature. It follows that the EBA has no competence under Art 112a to examine the merits of a board’s decision and to go into the substance of a case, not even indirectly.
The specific way in which the deciding board actually exercised its discretion on procedural matters falls outside the EBA’s competence, since this would need a review of all the facts and circumstances of the case, which would necessarily mean going into the merits of substantive issues. The EBA referred to R 10/09, Reasons 2.2; R 7/21, Reasons 1.
The fact that in most of the cases underlying the decisions to which the proprietor referred in the petition for review such an amendment was admitted by the deciding board does however not mean that the board had to do so in the case underlying the petition for review.
Exercising discretion, as provided for in Art 13(2) RPBA, implies that the board could consider various criteria and take into account the specific circumstances of the individual case before it, including the proprietor’s and the opponent’s submissions presented in favour of or against admittance, respectively.
One important aspect, was that the objections of lack of sufficiency were not overcome by the deletion of dependent claims.
Comments
The reasoning of the EBA is by now classical. No board is obliged to disclose in advance to the parties how and why, on the basis of the decisive issues under discussion, or at least those foreseeable as the core of the discussion, it will come to its conclusion.
It is also nothing new that the EBA makes a distinction between a subjective surprise and an objective view on the matter.
It is very easy to dismiss petitions for review when it comes to admissibility or not of submissions by claiming that a petition for review can only deal with procedural matters, and hence anything which could come near to a substantial review is not to be taken into account.
It remains nevertheless that procedural case law in matters of deletion of claims is not coherent. There are at least four lines of case law in the matter.
A petition for review might not be the right forum, but the divergence in procedural case law in general, and especially in matters of deletion of claims, has become a real problem under the valid RPBA.
That when applying Art 13(2) RPBA, the criterion of Art 13(1) RPBA is as well applicable has been decided in a series of decisions, e.g. T 824/18, Reasons 4.3, and T 1832/18, Reasons 6.2.
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