The patent relates to vapor hydration of a hydrophilic catheter in a package, said catheter being used for intermittent catheterization.
The opponent’s point of view
Documents D10 to D12 should be admitted into the appeal proceedings. D11 and D12 could not have been filed earlier and served to prove the surprising claim interpretation submitted by the proprietor in national infringement proceedings. That surprising interpretation justified the admittance of D10 and of the new objections of lack of inventive step starting from D10. D10 was cited in the application as filed and the proprietor was thus familiar with its disclosure.
The proprietor’s point of view
The appealed decision did not rely on any of D10 to D12. There was no reason for filing the new documents only on appeal. Since D10 was cited in the application as filed, the opponent should have filed any objection based on D10 in the first-instance proceedings. Documents D11 and D12 related to national proceedings and were irrelevant to the appeal.
The board’s decision
As D10 to D12 were filed together with the opponent’s statement of grounds of appeal, they may be admitted only at the discretion of the board under Art12(4) RPBA.
Admissibility of D10
D10, which is cited in paragraph [0010] of the opposed patent, is used by the opponent as a starting point for new objections of lack of inventive step. The opponent argued that it was surprised by the claim interpretation put forward by the proprietor in infringement proceedings before a national court.
The board held that this is not a valid reason for submitting new prior art in support of new objections based on that interpretation. The parties – and in particular the opponent – were free to discuss possible interpretations of the claims and to submit objections based on those interpretations in opposition proceedings, so that any objection based on D10 should have been submitted in the first-instance opposition proceedings, cf. Art 12(6) RPBA, second sentence.
Admissibility of D11 and D12
D11 and D12, dated after the appealed decision, relate to infringement proceedings in Germany concerning the opposed patent. According to the opponent, they proved that the proprietor put forward a surprising claim interpretation in those proceedings.
A claim interpretation submitted in national proceedings is irrelevant to the present appeal case before the EPO and, as set out in connection with D10, cannot serve to justify new objections based on new prior art documents.
In view of the lack of relevance of D11 and D12, the board decided not to admit them into the appeal proceedings.
Comments
Admissibility of D10
According to T 1522/21, Reasons 1.1, it is established case law, see Case Law of the Boards of Appeal [CLB], 10th edition 2022, IV.C.4.4, that a document is not automatically scrutinised in opposition or opposition appeal proceedings simply because it was quoted and acknowledged in the patent in suit. As the opponent has not referred to such a document during opposition proceedings but, for the first time, with its statement setting out the grounds of appeal, it is not admissible under Art 12(6) RPBA. In general, documents considered during examination procedure or mentioned in the search report, are not automatically part of the opposition procedure, cf. T 652/99, T 111/04, T 291/89.
There is one exception to this rule: the document acknowledged as closest prior art in the description of the patent, cf. T 536/88, T 541/98, T 454/02, T 86/03.
BAs are certainly not bound by interpretations of the claims submitted before a national court, even if the national court would adopt the interpretation of a party.
https://www.epo.org/en/boards-of-appeal/decisions/t211189eu1
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