CASELAW-EPO - reviews of EPO Boards of Appeal decisions

EP 2 279 254 B1 relates to novel lipid formulations for nucleic acid delivery.

Brief outline of the case

A first decision of the OD has been set aside due to a SPV under Art 113(1), cf. T 505/20.

In a second decision of the OD, the MR and AR1-12 were not admitted as the OD considered that there no exception to PRP was possible. The OD decided maintenance according to AR13.

Both proprietor and opponent appealed.

In a second decision, the board

• confirmed the non-admissibility of the MR and of AR1-12 in view of the PPR
• considered that AR13 infringed Art 123(2) and the same applied to AR14-19.

The board dismissed an objection under R 106 and revoked the patent.

The proprietor’s point of view

The proprietor argued that PRP is a problematic concept and should not be applied at all. The proprietor argued that PRP was created by the EBA in G 9/92 without any basis in the EPC. PRP was not a principle of procedural law generally recognized in the Contracting States of the EPC.

The proprietor approved of the minority opinion in G 9/92, which considered PRP to be contrary to the principle of ex officio examination, and hence not applicable in proceedings before the EPO.

The proprietor further argued that PRP does not apply in second first instance proceedings if the board found that the first instance decision suffered from a SPV and remitted the case back to the first instance department. It based this argument upon T 727/19 and T 2086/13.

The proprietor submitted that the reasoning in T 2086/13, Reasons 4.4,  should be applied by analogy to the present case. In T 2086/13, the board, in the second appeal proceedings, concluded that the OD, in its second decision, had been correct not to limit its examination to the single issue addressed in its first decision, which had been set aside in its entirety by decision T 306/09 on account of a SPV.

The proprietor had also identified a second possible exception to PRP: the change of the factual basis of the proceedings caused by the admission of document D38 into the proceedings, i.e. an experimental report filed by the opponent..

The board’s decision

In G 9/92, the EBA stated that the EPC did not contain any provision that explicitly provided for the PRP, but did not contain any provision expressing the contrary principle cf. G 9/92.

The Board noted that the position of the EBA was that PRP is a principle of procedural law generally recognized by the Contracting States, cf. G 9/92, Reasons 1, and G 1/99, Reasons 2.1, and 9.2.

Thus the EBA has already taken into consideration the issues that the proprietor considers are such as to render PRP problematic. That G 9/92 contained a minority opinion does not change this finding.

The board did not find the proprietor’s general criticisms of PRP to be persuasive as these have already been addressed by the EBA.  

Accordingly, the board saw no basis for departing from the established jurisprudence. PRP is a settled principle binding on the boards, and the proprietor’s general objection cannot succeed.

The board did not agree that PRP does not apply in case of a SPV. The exception recognised in T 727/19 arose in fundamentally different circumstances from those of the present case. The principle of the PRP was held not applicable where a case is to be remitted to a division in a new composition because of a suspicion of partiality.

By contrast, in the first board decision, the SPV was a violation of the right to be heard. This violation of the right to be heard, while serious, does not undermine the legitimacy of the entire earlier decision making process.

The board disagreed with the proprietor contention based on T 2086/13 that, where a first-instance decision is set aside due to a SPV, this necessarily entails that PRP no longer applies.

The board saw no reason to extend the exceptions to PRP to a SPV.

The board observed that its findings are in line with the findings in T 974/21, Reasons 2.3.2. Here, too, the competent board held that the breach of a party’s right to be heard did not preclude the application of PRP.

The board did not consider that the admission of D38 changed the factual basis of the proceedings.

Even if it is assumed that the present case falls into one of the exceptions to PRP, the board noted that a proprietor should follow the scheme set out G 1/99.

The proprietor has made no attempt to file restricted claims, and the proprietor has not shown, nor is it apparent to the Board, that compliance was impossible by restriction;. Therefore the G 1/99 conditions are not met, hence it cannot rely upon any exception to the principle of PRP.

Comments

Exceptions to the PPR

As any rule of exception, the possibility of escaping the PPR should be handled restrictively and the scheme set out in the headnote of G 1/99 should be applied.

A suspicion of partiality weighs much more than a violation of the right to be heard.

A violation of the right to be heard can occur without any bad intention on the side of the OD, whereas a suspicion of partiality results from a voluntary action of the OD.

Affidavits by former members of the boards

During the procedure, the proprietor filed D42= an affidavit by W. Sekretaruk, explaining why the exceptions from PRP should apply to the present case. This was mainly due to the admissibility of D38=an experimental report filed by the opponent.

During the procedure, the opponents filed D46= an affidavit by C. Rennie-Smith, explaining why the arguments and conclusions in D42 were incorrect and stated that, in the present proceedings, the “PRP” prevents the admission of the MR and AR1-12.

From the minutes of the OP before the board, it appears that Mr W. Sekretaruk was accompanying the proprietor.

Both Mr Rennie-Smith and Mr Sekretaruk are former legal members of the boards of appeal, the latter having even be chairman of the legal board of appeal.

Once retired, former members of the boards can have any professional activity they think fit. Nevertheless it does not seem adequate that former members of the boards try to influence first instance divisions and present members of the boards by providing parties with affidavits.

The board did not make any comment about the affidavits, but it is not the first time that former members of the board draft affidavits for parties.

There might be no legal restraint for former board members to act for a party, but there is certainly a minimum of decency not to do so, and even more to appear before former colleagues.  

Parties can request affidavits from further members of the board, but those should only be for internal use of the party.

T 1168/24