EP 2 569 419 B1 relates to methods to promote the differentiation of pluripotent stem cells into insulin producing cells.
Brief outline of the procedure
The OD held, inter alia, that, while the subject-matter of claims 1 and 2 of the MR did not meet the requirement of novelty, the patent could be maintained according to AR1.
Both proprietor and opponent appealed.
For the board, the skilled person would have been in a “try and see” situation and would have obtained a population of cells as defined in claim 1 with a high degree of co-expression of the PDX1 and NKX6.1 markers when combining the teachings of documents D6 and D5, hence the MR as well as AR 1-48 lacked IS.
AR 49-54 were not admitted under Art 13(2) RPBA.
AR 49-54 are limited to the product claims of the MR and of AR 40 and 1 to 4, respectively, and thus are devoid of method claims. They were submitted about one month before the date of the OP in reply to the board’s communication under Art 15(1) RPBA.
The board’s decision
The filing of AR 49-54 was considered by the board as an amendment of the proprietor’s appeal case.
For the board, no exceptional circumstances are apparent in the case in hand which could allow the board to consider these requests in appeal.
The opponent’s objections of lack of IS of the subject-matter of method claim 3 of the MR, and claim 1 of AR 1, dealt with in the decision under appeal, were already raised and addressed in the opposition proceedings.
Despite the fact that a positive conclusion had been reached in that respect in the decision of the OD, on appeal, the opponent reiterated the IS objections against the method claims in its grounds of appeal, and specifically addressed why it disagreed with the reasons in the appealed decision.
For the board, the proprietor had thus reasons to file new AR addressing the IS objections against the method claims earlier than one month before the OP, namely with the reply to the opponent’s appeal, instead of awaiting the board’s negative opinion on IS of those claims.
The proprietor’s arguments that the newly filed AR addressed and rendered moot the board’s concerns, that the method claims lacked an IS, failed to constitute cogent reasons to justify its filing about one month before the OP.
The proprietor’s arguments that the newly filed AR constituted a serious attempt to streamline the appeal proceedings and thus contributed to a reduction of the complexity of the case because they focus its appeal case on the sole negative issue in the decision under appeal, i.e. lack of novelty of claims 1 and 2 of the MR, also failed.
Contrary to the proprietor’s arguments, taking into account the newly filed AR would change the factual and legal framework of the appeal case before the board and would not lead to a simplification of the appeal proceedings.
With AR 49 to 54, the proprietor presented for the first time amendments containing a deletion of all method claims. Their consideration in the proceedings would require the board to assess the complex issue of novelty of the product claims, together with a new discussion on sufficiency of disclosure of the state of the art on account of new documentary evidence, or to remit the case to the opposition division, both of which are detrimental to procedural economy.
Furthermore, when drafting the communication, the board also had no reason to assume that a defence in the form of a limitation to the product claims would still be a realistic option for the proprietor in view of its conduct in the opposition proceedings, in particular at the initial stage of the appeal proceedings.
In response to the OD’s finding during the OP that claims 1 and 2 of the MR lacked novelty, the proprietor filed a new AR 1 limited to method claims, hence consciously choosing not to obtain a decision of the OD on the amended product claims.
Unlike for the method claims, a fall-back position requiring a separate discussion of the product claims was not pursued in the statement of grounds of appeal or in the reply to opponent’s statement of grounds of appeal.
Comments
That in a communication under Art 15(1) RPBA a board can take an opposite position to that of an OD, cannot be a surprise and justify the late filing of requests. This was already the case under the previous RPBA.
Deletion of claims has been the subject-matter of various publications in the present blog.
While in lots of cases, the deletion of not allowable claims can lead to procedural economy, this is not necessarily the case when a whole category of claims is deleted, when the remaining claim category had never been discussed in first instance.
A comparable situation occurred in T 482/19. in which product claims were deleted in late filed AR. T 482/19 has been adopted by a series of boards.
The present decision, as well as T 482/19 do not agree with T 1480/16, in which AR with deleted method claims were admitted.
This should be a serious warning for proprietor’s.
Their behaviour in opposition can be detrimental to their appeal case.
On the other hand, deleting unallowable dependent claims, should not be a problem, even if, strictly speaking, it represents an amendment of the proprietor’s appeal case, see T 732/21.
It should however be kept in mind that some boards refused to admit AR in which dependent claims were deleted, see T 317/20 or T 1259/17.
On the procedure
It is surprising that the patent was at all granted in the form it was a the N destroying document was mentioned in the SESR. The board confirmed the lack of N established by the OD.
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