Patent EP 2 819 699 B1 relates to controlled release compositions and their method of use, and to low viscosity controlled release compositions for use in the treatment of mastitis in lactating animals.
Brief outline of the case
The OD decided that the new MR filed in opposition was infringing Art 123(2).
The patent was maintained according to AR1. The proprietor appealed.
The board set aside the OD’s decision as it decided that the MR did not infringing Art 123(2).
The case is interesting in that it deals with alleged references by the opponent to submissions made in opposition. The board held that this reference did not answer the requirements of Art 12(3) RPBA.
The proprietor’s point of view
In its reply to the opponent’s response, the proprietor came up with Art 12(3) RPBA and referred to the Case Law of the Boards of Appeal of the EPO, 10th edition, 2022, V.A.3.2.2.
This objection was raised as far as Art 83 and 56 were concerned, not as far as the opponent’s arguments concerned the core of the dispute, i.e. Art 123(2).
The opponent’s position
In the reply to the appeal the respondent-opponent expressly formulated objections under Art 123(2) and 84 (support) against the MR and only additionally referred to its submissions in opposition as far as they concerned Art 84, clarity and Art 56.
The board’s decision
In its communication pursuant Art 15(1) RPBA the board pointed out that according to Art 12(3) RPBA the reply shall contain a respondent’s complete appeal case and should specify expressly all the requests, facts, objections, arguments and evidence relied on.
The board indicated that the references in the reply to the submissions by the parties during the first instance do not meet the requirement of expressly specifying the arguments relied upon and quoted the Case Law of the Boards of Appeal of the EPO, 10th edition, 2022, V.A.3.2.2.
The Board further indicated that in the decision under appeal the OD rejected part of the opponent’s arguments for non-compliance of the main request with Art 123(2) and presented reasons for the compliance of AR1 with the requirements of sufficiency of disclosure and inventive step which do not appear affected by the difference between the AR and the MR.
The Board expressed the preliminary opinion that under these circumstances the respondent-opponent could and should have expressly specified the arguments intended to be relied upon for its case against the MR during the appeal proceedings in the reply to the appeal and that the board therefore intended not to admit the respondent’s sweeping unspecific references to the submissions during the first instance under Art 12(5) RPBA.
The Board therefore confirmed its preliminary opinion and accordingly did not admit the respondent-opponent’s sweeping references to the submissions by the parties during the first instance proceedings into the appeal proceedings.
Comments
It is nothing new that a mere reference to statements made in first instance proceedings, specially in opposition, are not sufficient to support a party’s grounds of appeal or reply to the grounds of appeal. This has been discussed a few times in this blog and is in principle correct. See here, here and here, the latter being under the RPBA07.
Whilst at a glance, it looks as if, in the present case, the opponent did not correctly argue its reply, this does not appear to have happened.
It first has to be kept in mind that the OD’s decision only refers to Art 123(2) and does not once mention Art 83 and 56 when dealing with the MR. As the OD decided on Art 123(2) there was no reason to deal with Art 83 and 56, even in appeal. If a claim infringes Art 123(2) it is moot to discuss sufficiency or IS.
The objections under Art 83 and 56 can thus be called carry over objections (CoO)in analogy to carry over requests (CoR), also discussed in this blog, recently here.
The opponent only refers to the submissions in opposition as far as Art 83 and 56 were concerned. See the footnote on page 1 of the reply to the appeal.
As far as Art 123(2) is concerned, the opponent correctly argued, in his reply to the appeal. why the decision was not to be overturned. The opponent also explained in its reply to appeal why in his opinion the description was not correctly adapted to the claims of either the MR or AR1, cf. Art 84, support.
Reference to Art 12(3) and the case law book was introduced in the procedure by the proprietor when it took position on the opponent’s reply to the grounds of appeal.
When the board claims that the opponent did not submit any substantive arguments in response to the preliminary opinion expressed by the board in its communication pursuant Art 15(1) RPBA this is a very biased and distorted way of dealing with the opponent’s argumentation.
As Art 83 and 56 were at no moment subject of any discussion, the board actually took a flimsy pretext to squeeze out the opponent. This is neither fair nor correct. In theory it could have happened that Art 83 and 56 could have played a role, but it was actually an easy way for the board to get rid of the case.
That the opponent correctly argued his case is also proven by the fact that the board admitted that the adapted description filed by the proprietor for the MR and AR1 not in its statement of grounds of appeal, but only in response to the opponent.
If the opponent’s argumentation would have been as bad as claimed by the board, the proprietor would not have felt obliged to react.
The present decision is thus highly debatable and could figure under the, not so friendly, comments found at the end of the following article of JUVE:
As far as procedural aspects are concerned, it is difficult not to agree with what is stated in the article.
https://www.epo.org/en/boards-of-appeal/decisions/t221079eu1
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