EP 3 049 439 B1 relates to bispecific polypeptides.
Brief outline of the case
The opposition was rejected and the opponent appealed.
The MR corresponds to the patent as granted.
The opponent did not attend the OP before the board, but maintained its written submissions.
In the statement of grounds of appeal the opponent referred to the notice of opposition, which was even attached to the statement of grounds of appeal, with respect to its objections under N as well as sufficiency and added-matter. The opponent only argued lack of N over D11 in these grounds.
The board did not accept the mere referral in appeal to the opposition statement under Art 12(3) RPBA, but queried the OD’s handling of the case in respect of an obiter dictum.
The board held that the opponent’s objection of lack of N over D1, D15 and D11, as well as the lack of IS over D1+D11, as well as the objections of lack of sufficiency and added matter, were not persuasive.
The case was remitted to the OD for further prosecution with D11 as CPA.
The OD’s handling of the case
In the summons to OP, the OD only dealt with N with respect to D11.
During the OP before the OD, it appears from the minutes that D1+D11 was objected under lack of IS.
An objection of lack of IS with D11 has not been “accepted” by the OD as D1 was CPA.
In its decision, the OD considered that claim 1 as granted was involving IS over D1+D11.
In an obiter dictum, Reasons 9.10, the OD dealt, at the request of the opponent, with the objection of lack of IS with D11 as CPA. The OD concluded in the obiter that even with D11 as CPA, claim 1 of the MR involved IS.
The opponent’s objection of lack of IS with D11 as CPA in appeal
Further to the objection raised during the OP before the OD with D11 as CPA, in a letter dated 22.12.2024 (and not 2022), the opponent did not address the issues relating to the admittance of a line of argument relying on D11 as the CPA, but instead presented a detailed problem-solution approach based on this document for all the requests on file.
The board’s decision
Opponent’s objections of lack of N, sufficiency and added matter against the MR
The board held that, even if copies of the relevant submissions are annexed to a letter in appeal proceedings, this cannot replace a dedicated argument tailored to the grounds for the decision. This is also critical in view of the substantiation requirements set out in Art 12(3) RPBA.
The board added that all the letters from the opposition proceedings are accessible from the file anyway; therefore, attaching letters from the opposition proceedings and making general references to them does not fulfil the requirement of substantiation. The corresponding objections were thus not admitted under Art 12(5) RPBA.
Objection of lack of IS over D11 as CPA
The board agreed with the proprietor’s view that admittance of the objection of lack of IS starting from document D11 as CPA was still an open issue.
During the OP in opposition, it is only at the very end of the discussion of IS, and after the relevant decision on IS had been announced, that the opponent brought up an objection of lack of IS starting from D11 as CPA.
Both the OD’s decision and the minutes of the OP before the OD fail to indicate whether a procedural decision was taken on the admittance of the line of argument under IS starting from D11 as CPA.
The proprietor had not been heard on D11 for the question of IS, nor could it appeal the decision on those points as it was not negatively affected.
The board noted that, on the other hand, by not participating in the OP, the opponent did not make any contribution to reconstructing the discussion before the OD.
The OD’s decision contains an obiter dictum, which does not provide further clarification in this respect. To the contrary, it creates uncertainty as to whether the question of IS had been conclusively decided upon.
Form a purely legal point of view obiter dicta have no significance for the decision of the specific case and have no binding force.
The board found that the use of an obiter dictum in the present case was not appropriate, at least owing to the fact that it contained a part of the finding on which the decision was based, namely that the claimed subject-matter was considered inventive.
Both the decision and the obiter dictum related to the same ground for opposition, lack of IS, and therefore the statement contained in the obiter dictum had been “omitted” from the formal decision.
After having decided that the subject-matter of claim 1 was inventive starting from D1, the OD should have addressed further objections of lack of inventive step, if any were on file. Therefore, the OD should first have taken a decision on the admittance of the inventive step attack starting from D11.
Had the OD formally decided not to admit the attack based on document D11, there would have been no need for an obiter dictum which created uncertainty.
The board held that the assessment of IS seems to require further discussion and remitted the case to the OD for further prosecution.
Comments
Reference in appeal to submissions in opposition
It is not the first decision of a board according to which a mere reference in appeal to submissions in opposition will be dismissed under Art 12(3+5) RPBA, as they do not take into account that a decision has been taken by an OD.
Admissibility of a late filed objection
What is indeed missing in the decision is a clear decision on the admissibility of the late filed IS objection based on D11. The OD could not circumvent its duty on deciding the admissibility of a late filed objection by adding an obiter dictum on IS in the decision.
Obiter dictum
An obiter dictum cannot have for subject a topic, here IS, which is part of the actual decision of an OD (or ED). It should be totally unrelated to the reasons brought forward in the decision.
The present obiter dictum was nothing more than a very bad compromise. The OD might have got rid of the case, and felt it gained time, but in the end, it backfired.
T 1019/22
https://www.epo.org/en/boards-of-appeal/decisions/t221019eu1
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