EP 3 456 190 B1 relates to the production and use of transgenic murine hosts capable of producing antibodies or derivatives thereof-
Brief outline of the case
The OD rejected the opposition.
D2, D36 and D41 were filed by the opponent on 14.04.2025 in reply to the proprietor’s reply to the SGA. Those documents had been filed in opposition.
Only D41 appeared to be relevant, and was admitted by the board, as well as an objection of lack of IS based on D41.
The board held that claim 1 as granted lacked IS over D41=US 2006/0015957. The same applied to AR1-3.
The patent was thus revoked.
The opponent’s point of view on the admissibility of the submission of 14.04.2025
The submission of 14.04. 2025 was made in response to assertions made for the first time in the proprietor’s reply to the SGA. This could not have been done earlier because the proprietor’s assertions were not part of the decision under appeal.
The submission also included arguments in relation to the AR which could not have been made earlier. It was not known earlier which, if any, AR the proprietor would maintain. It was therefore legitimate to include this response.
The proprietor’s point of view on the admissibility of the submission of 14.04.2025
The proprietor objected to the admittance of the appellant’s submissions on novelty based on documents D2, D36 and D41.
The proprietor requested that if the opponent’s submission of 14.04.2025 were admitted, then that the response thereto dated 24.07.2025 be also admitted. The board also admitted this submission.
The proprietor argued that the submission of 24.07.2025, merely further developed the discussion of paragraphs [0481] and [0482] and Figure 33 of D41.
The board’s decision on the admissibility of the late submissions
The opponent’s submission of 14.04.2025
The relevant part in the opponent’s letter concerned IS assessed starting from D41. The proprietor’s letter dated 24.07.2025 merely referred to the SGA.
As only D 41 appeared relevant, the board did not have to decide on the admissibility of D2 and D36.
In relation to D41, the board considered that the arguments in the opponent’s letter of 14.04.2025 represented a legitimate response to issues raised in the proprietor’s reply to the SGA which the opponent could not be expected to include in its SGA.
Similarly, the opponent could not have been expected to raise objections to AR which were not dealt with in the proceedings before the OD because a higher ranking request was held allowable.
At the time of submitting the SGA, the opponent could not have known which AR would be maintained in the appeal proceedings.
The proprietor’s submission of 24.07.2025
The board admitted the proprietor’s letter of 24.07.2025.
The board held that the proprietor’s submissions of 24.07.2025 introduced new factual allegations which went beyond the matter addressed in the reply and in opposition. They therefore constituted an amendment of the respondent’s appeal case.
The proprietor did not identify any exceptional circumstances that would justify the late submissions. Nor were the submissions presented in response to new developments in the appeal proceedings following the issuance of the board’s communication under A 15(1) RPBA, or to new matter introduced by the board in that communication.
Paragraphs [0481] and [0482] and Figure 33 of D41 had been discussed in detail during the opposition proceedings, in the decision under appeal, and in the parties’ written submissions on appeal.
The contested submissions could and should therefore have been presented earlier, rather than at this late stage of the appeal proceedings.
They were thus not admitted under Art 13(2) RPBA.
Comments
The proprietor provoked himself a reaction of the opponent in its reply to the opponent’s SGA. Without this move of the proprietor, the situation might not have been so favourable to the opponent.
It appears always better in appeal to stick to the legal and factual framework set up in opposition.
The present decision is a confirmation of T 0079/24, commented in the present blog. Without knowing which AR, admissibly filed and maintained in opposition, will be kept by the proprietor in appeal, the opponent cannot take position on the AR on which the OD has not taken position, for instance, because a higher ranking request has been found allowable.
In T 1088/23, commented in the present blog, the board had decided that it could examine ex officio AR which had not been subjected to a first instance decision. This was already better than what was required from the opponent in T 0664/20.
The present decision, as well as T 0079/24 represent a nice contrast to T 0664/20, commented in the present blog. In T 0664/20,the board held that the opponent, when entering appeal, should take position with respect to all AR, even those not having been decided upon by the OD. This position is simply ludicrous and T 664/20 should end in the dustbin of history.
On the procedure
D41=US 2006/0015957 and EP 3 456 190 B1 bear the same classification unit A01K67/027.
The European search was, inter alia, carried out in A01K.
The ESR mentioned 8 documents in category A, 4 in category A,D, and 1 in category A,P. It is thus surprising that D41 was not found during the European search.
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