EP 2 139 494 B1 relates to pharmaceutical formulations containing dapaglifozin (Forxiga™) propylene glycol hydrate.
Brief outline of the case
The patent was opposed by 6 opponents and the OD revoked the patent.
The board set aside the OD’s decision as it had committed a SPV.
The proprietor requested a different apportionment of costs which was refused by the board.
The SPV
The OD committed a SPV in that the decision proposes for the first time a method for isolating the solvate from the medication by dissolution in a physiological aqueous medium, followed by analysis of the remaining insoluble crystal.
This specific part of the reasoning had not been discussed at any point during the preceding opposition proceedings.
Even the opponents did not dispute that the specific method of isolating the solvate from the tablet by dissolution in a physiological medium so as to analyse the crystal was never mentioned during the OP.
There is no indication in the minutes of any discussion on this point either.
For the board, it was not necessary, for the purpose of Art 113(1), to assess whether the burden of proving that the tablet could not be analysed rested with the proprietor, or whether the tablet could be analysed as such without prior separation, because the decision is not based on such aspects.
It was for the same reasons not necessary to speculate on the answers to be given by the EBA in the current referral G 1/23, and whether the possibility to analyse the features of the tablet could become irrelevant to their being state of the art, because the assumption that analysability is a requirement is also an essential part of the reasoning in the appealed decision.
The request for a different apportionment of costs
In the communication under Art 15(1) RPBA, the board had expressed the preliminary view that the first-instance proceedings were characterised by a SPV justifying both a remittal of the case to the opposition division for further prosecution and a reimbursement of the appeal fee. In the same communication, the board had invited the parties to clarify their requests for OP before the board.
In reply, the proprietor agreed to the remittal, but opponents 3, 4 and 5 maintained their requests for OP in case the appeal would not be dismissed.
The proprietor questioned the need for OP in a letter prior the OP, and at the end of the OP before submitted a request for a different apportionment of costs, with their preparation, travel and accommodation costs to be divided between opponents 3, 4 and 5. The proprietor justified their request by the conduct of opponents 3, 4 and 5, who had persisted in their request for OP despite knowing of the violation of Art 113(1).
The board held that, departing from the general principle that each party bear its own costs requires special circumstances making such a departure equitable. The equity criteria has generally been interpreted by the boards such that apportionment of costs is justified if the conduct of one party is not in keeping with the care required, that is if costs arise from culpable actions of an irresponsible or even malicious nature.
No such special circumstances were apparent in the present case. The fact that opponents 3, 4 and 5 upheld their requests for OP can neither be regarded as abusive nor in breach of their duty of care.
Their behaviour does not go beyond a legitimate defence of their position and argumentation that no SPV occurred, and a normal exercise of their absolute right to OP under the circumstances.
The proprietor’s speculation that the opponents knew of the violation of Art 113(1) is in this respect completely irrelevant: the opponents certainly knew of the facts of the case, i.e. attended the OP and were notified the decision, but they were nonetheless entirely entitled to present legal arguments to the effect that these facts did not amount to a violation of the right to be heard.
Lastly, none of the typical situations recited in Art 16(1) RPBA were relied on by the proprietor or applied here.
Comments
SPV
When analysing recent SPVs one pattern appears to be recurrent.
The first examiner drafts a decision, the second member drafts minutes, whereby both did not cross-check their respective works, and the chair signs both without batting an eyelid.
It does not take much time to realise that minutes and decision are not in accordance. At least the chair of the OD should insure itself of the necessary coherence between the two.
One very probable explanation is that all members of an OD do not only, not sit together during the OP, but also when later the decision is drafted by the first member and the minutes by the second member.
As the pattern is recurrent, the EPO should draw the attention of ODs (and EDs) to take care of the coherence between decision and minutes.
Apportionment of costs
In T 0617/20,commented in the present blog, the board held that, beyond the general obligation to inform the other parties as soon as possible, the parties have no formal obligation to take even more active steps merely to avoid the costs already foreseen by the other parties. At most, parties must seek to avoid additional costs. The recognition of a formal obligation would place an unrealistic burden on parties to the proceedings before the EPO. Withdrawing an appeal, or an opposition, is a normal exercise of procedural rights.
In T 608/19, the proprietor requested that the opponent be ordered to pay the costs of a representation fee in appeal proceedings, since the failure to file the statement of grounds of appeal in due time was based on reckless conduct and constituted an abuse of process.
The request was rejected since each party to an opposition may defend his rights or interests by any legally admissible, whereby the right to OP is a legally admissible means. For the board, there is no obligation towards the proprietor to file only an admissible appeal.
Conclusion
Even if the case appears desperate, requesting OP at the EPO, be it in first instance or in appeal, is a normal exercise of procedural rights.
The normal exercise of legally admissible means cannot be subject to the fear of having to bear costs of another party.
In national civil jurisdictions and at the UPC the situation is quite different. The succumbing party has to reimburse the representation costs of the winning party.
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