The patent relates to immune molecules expressed in cancer tissue, and more particularly to evaluating the expression of immune molecules in tumour cells and tumour-infiltrating leukocytes, and especially B7-H1 AND PD-1 in treatment of renal carcinoma.
Brief outline of the case
The OD found that the priority of P1 was not validly claimed and D16, mentioned as P,X,PY in the SESR, became prior art under Art 54(2),
Claim 1 as granted and AR1-7 lacked IS over D20=EP 1 537 878, not mentioned in the SESR + D16.
The board held also that the priority was not validly claimed and confirmed the grounds for revocation.
The case is interesting in view of the way the board dealt with procedural requests in general and a request for remittal by both proprietor and opponent in particular.
The proprietor’s point of view
The OD erred in its finding on the validity of the claim to priority from P1. This changed the factual situation and thus the basis of the opposition division’s decision, and therefore qualified as exceptional circumstances that warranted a remittal to the opposition division.
Whether P1 disclosed the same invention as defined in the claim was critical for the assessment of IS and therefore for the outcome of the appeal case, but this had not been decided upon by the OD. It would therefore be fair that this issue be assessed at two instances.
The opponent’s point of view
The proprietor’s request for remittal had been submitted very late without any justification and should not be admitted into the appeal proceedings under Art 13(2) RPBA. No special circumstances could justify this request as the appellant had dealt with whether P1 disclosed the same invention as defined in claim 1 in the statement of grounds of appeal, so the request contradicted previous requests of the appellant and should not be deemed allowable under Article 11 RPBA.
There was no absolute right to have an issue decided on by two instances. Since all parties had submitted arguments on this issue in writing, they were prepared to discuss this matter, and a remittal was not appropriate.
However, if priority was held to be valid, there should be a remittal so N, IS and sufficiency of disclosure as of the priority date could be assessed at two instances.
The board’s decision
Whether to remit is a discretionary decision of the board which is subject to the limitations of Art 11 RPBA that remittal also requires “special reasons”.
The discretionary decision to remit or not is to be taken ex officio, at any time during the appeal proceedings. The board referred, inter alia, to T 1805/14, Reasons 2.4; T 78/17, Reasons 2.5 and to the Case Law of the Boards of Appeal of the EPO, 10th ed., 2022 (CLBA), V.A.9.5.
For the board, a decision on remittal is not dependent on any request by the parties and must be taken even in the absence of such a request.
Any request for remittal made by a party is therefore not subject to the provisions of Articles 12 and 13 RPBA.
Rather, Art 12 and 13 RPBA serve to take account of changes in the facts or the subject-matter of the appeal proceedings, i.e. “amendments” within the meaning of Art 12(4) and 13(1) and (2) RPBA, within narrow limits.
The board referred here to T 1919/17, Reasons 25; T 1913/19, Reasons 10 and 16. These provisions are thus directed at claim requests or allegations of facts and evidence, i.e. at substantive issues, objections and related arguments.
In contrast, procedural requests are not amendments within the meaning of Articles 12(4) and 13(1) and (2) RPBA. They can therefore be made at any time during the appeal proceedings and must be considered by the board, regardless of when they are made.
Procedural requests on questions that have to be taken up ex officio may relate to remittal, as in this case, or to referral to the Enlarged Board of Appeal, cf. Article 112(1,a), the admissibility of the appeal, cf. Art 110, admission or not and consideration of claim requests, allegations of facts or evidence, cf. Art 114, R 116(1), interruption of proceedings, cf. R 142, exclusion of board members, cf. Article 24(1) and (2) EPC, or the appointment of oral proceedings if expedient, cf. Art 116(1).
Comments
It can be agreed with the present decision that a decision to remit is a discretionary decision of the board which is subject to the limitations of Art 11 RPBA that remittal also requires “special reasons”.
It can also be agreed that any request for remittal made by a party is, a priori, not subject to the provisions of Articles 12 and 13 RPBA.
It can further be agreed with the present decision that, in a number of situations, a procedural request should be dealt with first, e.g. admissibility of an opposition or an appeal, new=late facts and evidence/requests submitted in appeal (or in opposition).
When the present board holds that procedural requests are not amendments within the meaning of Articles 12(4) and 13(1) and (2) RPBA, it is not sure that the present decision will be followed by other boards.
For instance, some boards have considered that certain procedural requests represent an amendment to a party’s case. Reordering requests in appeal represents certainly such a purely procedural request.
Such a procedural request can however have an effect on substantive matters and represents an amendment according to Art 12(4) RPBA and might not be taken into account by the board under Art 12(6) RPBA.
In T 1436/19, commented on this blog, the proprietor has requested during the procedure to reorder the requests filed when entering appeal. Without quoting Art 12(4) RPBA, the board held that “the reordering of the requests constituted an amendment to the proprietor’s appeal case that could not be taken into account”, cf. Reasons 1.3.
In T 1809/22, also commented on this blog, the board held that the order of the AR given by the proprietor is binding for him when he enters appeal, even as appellant. The occurrence of an intervention in appeal, was not a reason for reordering the requests, cf. Reasons 4. The board referred to Art 12(6) RPBA.
The present decision illustrates once more the fact that, in procedural matters, there is no coordination between the boards and each board decides how it sees fit. This is not good for the boards.
One board went even as far as to hold that exercising discretion is a question of substantive nature and not of procedure, see T 641/20, also commented in this blog.
Legal members of the boards seem to have a hight time.
On the procedure
The application was filed under the PCT on 06.10.2005 and entered the regional phase on 20.04.2006. The communication under R 71(3) is dated 15.02.2018 and the grant was decided on 22.03.2018. The decision to revoke after opposition is dated 19.05.2021, and the final decision of the board is dated 30.01.2024.
The ED had noted that the priority was not validly claimed but failed to find D20=EP 1 537 878
The patent bears the classification units A61K 39/395 and G01N 33/574
EP 1 537 878 bears, inter alia, the classification units A61K 39/395 and G01N 33/574
Any further comment appears superfluous.
https://www.epo.org/en/boards-of-appeal/decisions/t211006eu1
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