EP 3 296 282 B1 relates to a method for producing hydrohalofluoroolefins.
Brief outline of the case
The OD decided maintenance according to AR3. The opponent appealed.
The proprietor filed with the reply to the grounds of appeal AR 3, 3a, 4, 4a, 5 and 5a. AR3 is the highest ranked request. AR5b was received later.
In a communication under Art 15(1) RPBA, the board was of the preliminary view that the methods in claim 1 of all the requests lacked an IS and that, in view of that, it did not consider necessary to elaborate on any other issue at that point.
According to the minutes of the OP held before the original board, the board concluded that the subject-matter of claim 1 of AR3 lacked IS over D3.the same applied to AR3a, AR4 and AR4a.
Upon opening of the debate on AR 5, the board informed the parties that it was of the preliminary view that the request contravened the principle of no reformatio in peius.
The proprietor raised an objection of suspected partiality against all board members.
This objection of partiality was deemed admissible by the original board.
During the interruption in order to deliberate on the admissibility of the objection of suspected partiality, the proprietor filed AR6 by e-mail.
The proprietor’s point of view
The proprietor raised an objection and it declared a cross-appeal, referring to decision G 1/99 and national laws of several Contracting States that were foreseeing cross-appeals.
The proprietor further raised an objection of suspected partiality concerning all members of the board in its present composition.
Since the objection of “reformatio in peius” could be raised only by the opponent, raising the issue by the board infringed the principle of neutrality. The present members of the board should therefore be replaced.
On the admissibility of the objection of partially
In accordance with the procedure in decision T 1028/96, OJ EPO 2000, 475, the board in the original composition is competent to examine the admissibility of the objection under Art 24(3).
The proprietor raised its objection immediately after the board mentioned the issue of reformatio in peius. There is thus no objection arising from the requirement of Art 24(3), second sentence.
The proprietor has not based its objection upon the nationality of the members. No objection arises thus from the requirements of Article 24(3), third sentence, either.
The proprietor has indicated the facts and arguments in support of its objection. The objection is thus sufficiently substantiated.
The opponent’s arguments on this issue at the OP mainly concerned the substance of the objection, which should not be dealt with in this decision.
After deliberation by the board, in its original composition, the following interlocutory decision was given:
The objection of suspected partiality on the part of board members …., …. and …. is admissible.
An alternate board will have to decide on the merits of the objection.
Comments
Even if the alternate board will consider that the objection of suspected partiality has some merit, it will be difficult to overcome the conclusion that AR3a, AR4 and AR4a lack IS over D3. It will be as well difficult to deny that AR5 is contrary to the prohibition of the reformatio in peius. It can be certain that the opponent will raise the objection in the reopened procedure.
Whether AR6, filed by the proprietor during the interruption to decide on the admissibility of the objection of partiality, will at all be admissible, is not an acquired fact.
That the original board did not decide on the notion of cross-appeal is normal.
Whether the alternate board finds some merit to the objection of partiality, or the original board is reinstated, one of them will have to decide whether a cross-appeal is admissible under the EPC. A cross-appeal is not foreseen in the UPCA as such, and only provided in R 237-238 RoP of the UPC.
Reasonable doubts about the admissibility of a cross-appeal under the EPC are permitted.
On the procedure
D3=EP 2 778 150 was mentioned neither on the ISR, established by the JP office, nor in the SESR.
D3 bears the classification units C07C 17/358, C07C 21/18 and C07B 61/00. It has the same proprietor as the patent in suit.
The patent in suit bears the classification units C07C 17/358, B01J 27/125, B01J 27/135, C07C 21/18 and C07B 61/00.
As the patent in suit bears three classification units in common with D3, it is highly surprising that D3 was not found during either search and especially not during the SES carried out in C07C.
Comments
Leave a comment