EP 3 447 137 B1 relates to a liquid enzyme preparation and a method for preparing the same.
Brief outline of the case
The patent was maintained according to a new MR=MRn.
The board decided that MRn was not compliant with Art 123(2) as it contained an undisclosed disclaimer under G 1/03, which was not an accidental anticipation for the subject-matter of claim1 as maintained. The disclaimer was based on a dissertation at the LMU, published in 2010.
AR3 in which the product claims were deleted was not admitted in the procedure under Art 13(2) RPBA.
The patent was eventually revoked.
In the present blog entry we will discuss non-admissibility of AR3 in which a given claim category has been deleted.
The proprietor’s point of view
The proprietors argued that the amendment was a straightforward reaction to the board’s preliminary opinion that the opponent’s novelty attacks were considered to be admissible. AR3 limited AR2 to method claim 8 in which the subject-matter of claim 1 had been incorporated.
Deletions of claims should be admitted also late in appeal proceedings. The amendments were immediately apparent to the opponent and did not require further substantiation. The argumentation for IS was expected to be similar to that for AR2. Hence no new discussion was needed.
The opponent’s point of view
There are no exceptional circumstances that could justify the admittance of AR3 into the appeal proceedings.
The board’s decision
AR3 is amended compared to the previous requests in that the product claims are deleted and only the method claim is retained. This amendment shifts the focus of the opposition proceedings from the product claim to a method claim that was not considered in the opposition proceedings.
In case of deletion of claims, boards have held in several decisions that an appeal case had not been amended if the deletion of claims from a previously filed set of claims did not alter the factual and legal framework of the case or the subject-matter of the discussions, and did not prejudice procedural economy and procedural fairness
The board referred to T 1480/16, Reasons 2.3; T 981/17, Reasons 3; T 995/18, Reasons 2; T 1151/18, Reasons 2; T 2243/18, Reasons 2; T 1792/19, Reasons 2; T 2201/19, Reasons 5.5.
However, the prevailing view is now that even a straightforward amendment, such as the deletion of claims, always constitutes an amendment to the appeal case within the meaning of Art 13 RPBA. The board referred to T 1800/21, Reasons 3.3 and 3.4, and the decisions cited in that decision.
It needs therefore to be established whether the proprietors presented any exceptional circumstances, justified with cogent reasons, which could justify the admittance and consideration of AR3 in the appeal proceedings.
The board’s preliminary opinion did not raise any new issues. The preliminary view on the admissibility of the opponent’s novelty objections is not relevant to the board’s finding of lack of IS in respect of AR2.
No arguments on IS of the subject-matter of AR3 are on file. The admittance of this request would therefore either require a completely new discussion or, in the absence of specific arguments, lead to the same conclusion as in the case of AR2.
Consequently, the admittance would be contrary to either procedural fairness or procedural economy. For these reasons, the board did not admit AR3 into the appeal proceedings.
Comments
In T 1800/21, the following decisions were cited in Reasons 3.3:
T 1569/17, Reasons 4.3, T 2091/18, Reasons 3-5, T 0494/18, Reasons 1, especially 1.4, T 0532/20, Reasons 9.5-9.7, T 1058/20, Reasons 1.3.3, T 2295/19, Reasons 3.4.2- 3.4.5 and T 0602/21 Reasons 9.2.2.
The present decision as well as T 1800/21, and the decisions cited therein, do indeed represent a other line of caselaw according to which any deletion of claims following a communication under Art 15(1) RPBA is considered as an amendment under Art 13(2) RPBA. Strictly speaking this is correct and applies also to carry-over requests not discussed before a first instance division.
The catchword of T 1800/21, Point 3 and Reasons 4-4.4, is however problematic. In view of the evolution of caselaw, there is no longer any need to refer the matter to the EBA in order to ensure the uniform application of the law.
This is a conclusion, which one sees often in board’s decision by which the boards easily dismiss requests for a referral to the EBA. If a board is not willing to refer a question to the EBA, a board will always find excuses to justify its position, and the alleged evolution of case law is a very easy one.
This is a drawback in the EPO’s legal system as in matters or referral, boards are at the same time judge and party.
And yet it seems important for parties to appeal proceedings that their requests are not merely dismissed for formal reasons. What ought to be considered as a late filed amendment under the RPBA should eventually be decided by the EBA.
In the present case, the board has alleged that no arguments on IS of the subject-matter of AR3 were on file. If correct, this would have been a reason good enough for not admitting AR3 in the procedure and not to play with the notions of belated filing and the absence of cogent reasons for the belated filing.
As the method claim in AR3 was aligned on the deleted product claim1 of AR2, it would have been easy to deal with it. The board could also have remitted, but with the perspective of a further appeal. Rather nip this development in the bud.
Other boards decide on the substance irrespective of whether the admissibility of requests could be questioned. This is a service to the parties. Just coming with formal reasons is a denial of service to the parties.
In T 1230/25, Reasons 2.3.2 the board stated: “Irrespective of the above admittance issues, the board assesses those auxiliary requests on their merits”.
Contrary to T 1800/21, there is an absolute need to refer the matter to the EBA in order to ensure the uniform application of the law.
It is certainly easier to hide behind formalistic reasons as this improves the production/productivity of some boards. Boards are actually not appointed to look at their production/productivity statistics.
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