EP 2 265 251 B1 relates to pharmaceutical compositions that contain surfactant concentrations that promote bioavailability of a therapeutic agent in the composition.
Brief outline of the case
In the course of first appeal proceedings, cf. T 2431/17, the opponents objected for the first time that the priority was invalid for lack of entitlement, and submitted documents A045=WO 2008/052031 as PA under Art 54(2) and A049= WO 2009/117242 as PAt under Art 54(3) EPC. In T 2431/17, the Board decided that
(a) The patent did not validly claim priority. As a result, A049 anticipated the subject-matter of the (then pending) MR.
(b) As to AR 1 filed on 4 July 2018, the case was remitted to the OD for further prosecution in view of the essential outstanding issues not covered by the appealed decision, namely the question of novelty over A049 and inventive step taking into account A045.
Following remittal, the OD revoked the patent, and the proprietor appealed.
Upon remittal, the OD summoned the parties to OP and issued a preliminary opinion based solely on the request corresponding to AR 1 in T 2431/17.
The proprietor submitted AR 1-7 on 6.12.2021.
In the ensuing decision, the OD rejected the MR for lack of novelty, and did not admit any of the AR.
The second decision of the OP was based on:
- as MR, AR 1 filed on 4.07.2018;
- AR 1-7 filed by letter dated 6.12.2021; and
- new AR 6 filed by letter dated 8.02.2022.
The OD’s decision
The AR filed on 6.12.2021 were submitted late in the opposition procedure, and more than two years after the issues related to A049 first arose in the preceding appeal proceedings. None of these AR had been expressly remitted to the OD with the board’s decision.
These requests did not form part of a convergent development with respect to the higher-ranking requests, and resulted in the introduction of a number of fresh issues of dispute at a very late stage in the opposition procedure. Accordingly, none of the AR were admitted.
The board’s decision
The MRap and AR1ap in appeal correspond respectively to AR 2 and 4 filed before the OD on 6.12.2021. The OD did not admit these requests into the proceedings.
The board noted that AR 2 and 4 were not filed for the first time on 6.12.2021, but were respectively identical to MR “a” and MR “b” filed during the first appeal proceedings on 31.12. 2019. Accordingly, these requests were not submitted more than two years after the issues relating to A049 first arose in appeal proceedings, as reasoned by the OD, but after about four months only.
According to the appealed decision, none of these AR had been expressly remitted to the OD in T 2431/17. However, in the board’s opinion, there was no reason to expect such express indication that these AR should be considered upon remittal.
The board took the decision under Art 111(2) to remit the case for further prosecution because of the new issues arising in appeal, namely the question of N over A049 and IS taking into account A045, and thus with the aim of having these issues examined at two levels of jurisdiction.
Nothing in the ratio decidendi of T 2431/17 suggests that the AR were to be excluded from examination upon remittal.
The board accepts that the turn of event did not give the proprietor “carte blanche” to file amended requests at this advanced stage of the overall opposition and appeal proceedings without limitation, e.g. regardless of their number, convergence, or new issues raised.
However, while the admittance of these amendments was still subject to the OD’s discretion, this discretion was to be applied in a balanced way considering that their filing was occasioned by the new objections. The OD’s decision was not balanced in that it was based on the wrong assumption that the requests were filed for the first time on 6.12.2021, and it prevented the proprietor from defending any of the claim requests filed in response to the opponents’ new objections and refiled after remittal. Thus the OD did not appreciate the actual date and the circumstances of their filing.
Consequently, the board decided to admit the MR and AR 1.
As both the MR and AR1 were lacking IS, the board confirmed the revocation.
Comments
The decision is interesting in view of some comments about filing new AR upon remittal.
If a decision is set aside and the board remits to the OD (or the ED), it means that all previous AR not dealt with in the OD’s decision leading to appeal must be resubmitted, if they have to be dealt with by the OD (or the ED). They can be considered as a kind of reverse “carry-over requests. Those previous requests should therefore be admitted by the OD, if they were timely filed and properly substantiated in opposition proceedings.
The proprietor is free to file new requests upon remittal. It is clear that the OD has the discretion not to admit new requests. As usual, if some requests are not admitted, a board can, in subsequent appeal proceedings, verify whether the OD’s discretion has been correctly exercised.
Without saying directly so, this is was the board implied when it admitted the new MR and AR1.
A word of warning
In a kind of obiter dictum, the board made clear that remittal does not give the proprietor “carte blanche” to file amended requests at this advanced stage of the overall opposition and appeal proceedings without limitation, e.g. regardless of their number, convergence, or new issues raised.
In case of new issues raised, a proprietor should however be allowed to file new requests taking into account those new issues.
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