EP 3 454 785 B1 relates to a heart valve with stent having varying cell densities.
Brief outline of the procedure
Following an opposition, the proprietor filed a new MR. This MRn was infringing Art 123(2).
The OD decided maintenance according to AR1.
The proprietor and opponent 2 appealed. Opponent withdrew its opposition.
The board held that the patent as maintained lacked N over D9=WO 2015/028209.
Eventually the board maintained the patent according to AR24.
In appeal, the MR was the patent as granted.
The case is interesting as the MRap was not admitted in the procedure under Art 12(6) RPBA.
AR2-13 were not admitted in the procedure under Art 12(4) RPBA.
The proprietor’s point of view on the admissibility
Reverting to the patent as granted
The MR on appeal should be admitted into the proceedings. It was directed to the patent as granted. Compared with claim 1 of AR1, claim 1 as granted reverted to a more natural phrasing without changing the technical subject-matter or the scope.
The patent proprietor was not in principle hindered from reverting to the patent as granted in appeal. Admittance of the main request directed to the patent as granted posed no additional work, as the critical issues relevant to AR1 and to the patent as granted were identical, cf. T 671/08 and T 467/13.
The other AR
At the OP before the OD, the proprietor had requested to have AR14 considered before any other AR.
AR9-13 were based on requests that had been filed before the opposition division with an amendment filed in response to a conclusion present in the contested decision.
The proprietor argued that the requests did not introduce new issues and “have substantially all been seen before”.
On appeal, the proprietor requested that AR2-13 be considered prior to AR14. AR2-8 were identical to AR that had been filed and maintained before the OD. They did not constitute an amendment within the meaning of Art 12(4) RPBA.. AR9-13 are based on AR filed at the same time than AR2-8, with the deletion of the diamond-shaped limitation.
AR15-21 corresponded to requests that had been admissibly filed and maintained before the OD.
The board’’s decision on admissibility
Reverting to the patent as granted
The board noted that T 467/13 and T 671/08 were taken before the entry into force on 1 January 2020 of a revised version of the RPBA, explicitly indicating in Article 12(6) that requests which were no longer maintained shall not be admitted unless the circumstances of the appeal case justified their admittance.
In view of the proprietor’s submission that claim 1 of the patent as granted has the same scope as claim 1 of the then MR in e opposition proceedings, now first auxiliary request, but uses a more natural phrasing, the amendment does not seem suitable to address the issues which led to the decision under appeal. Moreover, there are no “circumstances of the appeal case” within the meaning of Article 12(6) RPBA,
AR 2-13
The OD found AR14 to be allowable, and no other AR was then considered.
The proprietor’s request that claim requests which were either entirely absent in this form or ranked in the first-instance proceedings lower than AR14 be considered first goes against the primary object of the appeal proceedings.
Moreover, the new AR and the re-ordering of previous requests constitute amendments pursuant to Art 12(4) RPBA, see, for example, T 1516/20, Reasons 2.5 to 2.9 and T 511/24, Reasons 2.
Even if those AR do not introduce new issues and “have substantially all been seen before”, this does not explain why the proprietor did not file these requests in that order during the opposition proceedings but only in the appeal proceedings.
Moreover, admittance and consideration of these requests could lead to new discussions of added subject-matter and patentability and potentially justify remitting the case to the opposition division for consideration of new issues. Admittance of these amendments would thus be contrary to procedural economy.
Therefore the board decided to use its discretion under Art 12(4) RPBA not to admit AR2-13 into the appeal proceedings.
AR15-23
Irrespective of the question of their admittance, AR15-24 were not allowable as they lacked N over D9.
Comments
The present decision shows clearly that the valid RPBA have changed the game. Procedurally decisions valid before the entry of force of the present RPBA are not any longer considered applicable.
Reverting to the patent as granted when entering appeal, is not any longer admissible. Art 12(6) RPBA applies.
The present decision also confirms that modifying the order of the AR when entering appeal constitutes an amendment under Art 12(4) RPBA. See for instance T 1389/23, commented in the present blog, or T 622/23, also commented in the present blog.
There is little chance of those AR being admitted as by changing the order of the AR, the board would often have to deal with AR never decided upon by the OD, hence Art 12(2) applies.
In such a situation whether those AR were admissibly raised and maintained becomes irrelevant.
On the procedure
EP 3 454 785 B1 bears the IPC classification A61F 2/24. The ISR has been established by the EPO. The search was carried out in A61F.
D9=WO 2015/028209 bears the IPC classification A61F 2/24 and A61F 2/844. The ISR has been established by the EPO. The search was carried out in A61F.
It is thus surprising that D9 was not mentioned in the ISR for the patent.
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