EP 2 985 027 B1 relates to a nasal composition comprising a mixture of hyaluronic acids and saline composition.
Brief outline of the procedure
The patent was revoked as all requests on file were lacking IS over D13= WO 2006/056801 (Not in ESR)+ D22=FR 2 977 494 (Not in ESR).
The proprietor appealed.
The board confirmed the revocation.
The decision is interesting as the board gave some information as to the meaning of clarity and conciseness under Art 12(3) RPBA.
The proprietor’s point of view
The proprietor requested, inter alia, that
- the opponent’s objections of lack of IS starting from D31, D35, D36, D44a/D44b, D28 and D19, or relying on a combination of D13 with any of D46, D28, D2, D5, D10, D16, D23, D39a-e, D40a-f, D17, D32, D19, D9, D41, D37, D34, D7 and D35, or with any of D3, D4, D6, D11, D14, D18, D24, D25, D26, D27, D31, D38, D42, D43, D48, D49, D50, D51, D52 and D53, and
- the new argument under Article 123(2) to the effect that the section of the original application disclosing the presence of a drug is directed to a nasal spray and not to a nasal composition,
not be admitted into the proceedings.
In summary, the opponent presented in appeal numerous IS attacks starting from different CPA documents, often without justification or proper reasoning. This approach made a substantive response impossible.
The opponent’s point of view
The opponent submitted, inter alia, that
Its submissions in appeal were clear, concise, structured, not excessively repetitive, and addressed the appealed decision. During the proceedings before the OD, the opponent had fully maintained all written lines of attack.
The board’s decision
The board reminded that the purpose of Art 12(3) RPBA is to ensure fair proceedings for all parties and to enable the board to start working on the case on the basis of each party’s complete submissions, cf. CLBA, 11th edition, 2025, V.A.4.3.5.a.
Furthermore, as underlined in T 321/21, Reasons 6.5, the substantiation requirement of Art 12(3) RPBA is not limited to the statement of grounds of appeal and the reply but must also be complied with for claim requests and objections filed later in the appeal proceedings. The present board considered that, for the same reasons, the clarity and conciseness requirements of Art 12(3) RPBA also apply to submissions filed later in the appeal proceedings.
in the present board’s view, Arti 12(3) RPBA, specifically its requirements for clarity and conciseness, also precludes the presentation of arguments that are either confusing or unnecessarily protracted, to the extent that potentially relevant objections or requests risk being obscured within an overabundance of extraneous or repetitive content.
The proliferation of objections or requests not only undermines the submitting party’s own position – by diverting attention from the critical issues at stake – but also contravenes the fundamental principles of fair proceedings and procedural economy.
Clarity and conciseness in submissions are essential to ensure that all parties can effectively engage with the core issues and that the proceedings remain efficient and equitable.
In the present case, the opponent’s submissions fail to clearly and concisely set out the reasons for upholding the decision under appeal.
The respondent’s submissions restate at length the EPC legal standards and basic case law principles, in several instances without a clear link to the actual discussion of the case at hand, and accumulate numerous citations of board of appeal decisions in an unspecific way.
Certain arguments are unnecessarily repeated in several contexts. While the same facts and arguments may be relevant under several legal grounds, this does not justify their repetition in full. In addition, these duplicated or overlapping parts of the argumentation are further obscured by a multitude of cross-references to other parts of the submission.
Objections of lack of N and IS in view of D28, D19 and D21 are unnecessarily duplicated by the citation of family members with the same relevant content.
Regarding IS, the opponent’s plethoric case includes objections combining D13, or D12a, D12b, D12c with any of D46, D28, D2, D5, D10, D16, D23, D39a-e, D40a-f, D17, D32, D19, D9, D41, D37, D34, D7 and D35. Page 79 adds or repeats objections combining D12a, D12b, D12c, D13 or D44a/D44b with D19/D1, D21/D5, D10, D16 and D22. It is unclear whether the term “bzw. vice versa” on the same page 79 should imply an objection exchanging the starting point and the teaching document. Further objections were raised:
- starting from D34, D35 or D46 in combination with D7, D8, D36 and D41, or
- starting from D46, D35, D44a/D44b, D28, D19, D21, D10, D31 in combination with any of D22, D9, D16, D32, D10, D19, D21, D39a, D40a, D23 or D31 (incidentally suggesting that some of these further documents might be prejudicial to novelty, see page 81 regarding D46), or
- combining D44a/D44b with D39a/D40a, or
- taking D36 as closest prior art (without any reasoning, see (ix) on page 86), or
- citing additionally D3, D4, D6, D11, D14, D17, D18, D24, D25, D26, D27, D31, D38, D42, D43, D48, D49, D50, D51, D52, D53 as prejudicial without any proper problem-solution approach.
The opponent’s additional submission dated of 59 pages does not address a number of points raised by the proprietor, such as the lack of publication date on D39a and D40a. Additionally, it unnecessarily repeats large parts of the argumentation submitted in the reply to the appeal.
Art 12(5) RPBA provides that the board has discretion not to admit any part of a submission by a party which does not meet the requirements of Art 12(3) RPBA.
The opponent submitted that, during the OP before the OD, that it had maintained the objections presented in writing. However, this does not change the fact that the opponent failed to demonstrate that the large number of IS objections of its appeal case, apart from the objection starting from D13 addressed in the appealed decision, had been admissibly raised during the proceedings before the OD. Here also,
It is not the task of the opposing party, nor of the board, to investigate whether and when each of these numerous attacks were submitted to the OD. Accordingly, the discretionary power under Art 12(4) RPBA is also applicable.
The case at hand combines the mentioned deficiencies, in that the reply to the appeal is both confusing and lacks conciseness, in that it is insufficiently substantiated in respect of a number of its objections, and in that there is no explanation as to which objections are to be considered as an amendment to the respondent’s case.
For these above reasons, the board did not admit the objections of lack of IS starting from any documents other than D13, or involving combinations with documents other than D22, D8, D19/D1, D21/D5 or D10.
Comments
It is abundantly clear, that the proliferation of objections or requests undermines the submitting party’s position. It shows that the party is not capable of deciding what is a valid attack or reply, or not convinced of its own argumentation.
In T 320/15, Reasons 1.1.2, it was held that the structure of the problem-solution approach is not to be seen as a forum where a party can develop various attacks at will from various prior art documents, in the hope that one of them would have a chance of success.
There is little to add to T 320/15, besides the fact that the opponent files a total of 143+59=202 pages of submission in reply to an appeal for a decision which already concluded with revocation of the patent.
T 0591/04 shows an example in which D7+D2 or D2+D7 allow to show that in both configurations the claim as granted lacks IS. What is clear from this decision is that, when using the problem-solution approach, the argumentation is necessarily completely different. This allow to say that in patents, addition is non-commutative©!
T 0591/04 is a good example to show how the problem-solution approach works when starting from two documents which can equally be considered as CPA.
One gets the filing that the opponent’s representative was paid by the number of pages or signs produced. This might be usual in some areas like translation, but is certainly not common in IP. I have seen long submissions, but they were all to the point and not repeating some allegations, even if drafted slightly differently.
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