EP 3 313 452 B1 relates to the preparation of an injectable cross-linked hydrogel
Brief outline of the case
The opposition was rejected and both opponents appealed.
None of the requests on file, as granted and AR1, were allowable due to lack of IS over D9=WO 2005/085329 as CPA.
The patent was revoked.
The case it interesting as it deals with late filed evidence and arguments.
The proprietor’s point of view
The proprietor requested that documents D20 to D22 cited by opponent 2 in support of its arguments not be admitted. D20 to D22 relate to alleged common general knowledge of the skilled person.
The same should apply to opponent’s 1 submission regarding the credibility of the technical effect depending on the stage at which the oxygen extraction step is performed.
In this context, the proprietor mentioned the introduction of new “grounds”.
The proprietor invoked Art 12(6) RPBA as reason for the non-admissibility of the opponents submissions.
The board’s decision
The board noted that the ground for opposition of lack of IS had been raised and discussed at length during the opposition proceedings and in the decision of the OD. It cannot therefore be a question of the introduction of a new ground of opposition as such, but simply of new objections or arguments and new documents in support of those objections and arguments.
The opponents had argued during the opposition proceedings that the examples in the patent would provide a comparison only in relation to a gel prepared by a process
- (i) in which the cross-linking step is not carried out in an inert atmosphere and
- (ii) in which there is no oxygen extraction step. Thus it would not have been possible to attribute any technical effect to the distinctive feature in relation to the closest prior art.
The question of the credibility of the claimed technical effect over the entire scope of the claims and in particular the relevance of the comparative examples had therefore been raised and discussed in the first instance proceedings.
The opponents’ submissions do not therefore constitute new objections as such, but simply new arguments representing a development of objections already raised in the first instance proceedings and in direct response to the OD’s decision that those objections were unconvincing.
Arti 12(6) RPBA only concerns requests, facts, objections or evidence which should have been submitted during the first instance proceedings
The board did not consider the opponent’s submissions to be new objections per se, but new arguments in support of the development of the line of argument already raised by the opponents in first instance. Therefore Art 12(6) RPBA does not apply to the submissions opponent’s submissions.
The admission of these new arguments must therefore be decided in accordance with Art 12(4) RPBA.
The new arguments were provided in response to the OD’s decision, do not introduce any particular complexity and do not run counter to procedural economy.
Consequently, the opponents’ new arguments were admitted in the appeal proceedings pursuant to Art 12(4) RPBA.
Comments
The present decision is to be welcomed as it has reasonable and not formalistic as it the case off (too) many boards with submissions not having been presented before the first instance. The RPBA should not be used such as to hinder any reasonable defence of the parties to an appeal.
Other decisions on late arguments
In T 919/22, commented on this blog, the board held that the relevant question is whether new arguments can be considered by a board of appeal or not. The board was “not convinced” that the findings of T 1914/12 could be applied to the present case, since the case at hand underlies the RPBA20 and not the RPBA07.
Contrary to the board in T 919/22, and without mentioning T 1914/12, the present board considered that the opponents’ submissions were further arguments developed in reply to the OD’s decision. Those arguments could furthermore not be
T 1914/12 has been confirmed in a number of other decisions: e.g. T 47/18, T 1381/15, T 315/15, T 133/19, T 1359/14, T 369/12, T 1875/15, T 691/16, T 128/15 and T 325/16.
To be complete, it has to be specified that, at the time, T 1914/12 deviated from T 1621/09 or T 1069/08.
According to T 247/20, Reasons1.3, the mere enhancing of an already existing line of argumentation is to be distinguished from an amendment of the grounds of appeal [or opposition].
is thus not only in line with T 1914/12, but also with T 247/20 which was decided under the valid RPBA.
The present decision shows once more that in procedural matters there is no harmonisation of the boards.
Common general knowledge
As far as common general knowledge is concerned, proof of this knowledge is never late as it is inherent to his knowledge, cf. T 987/01 and T 378/15.
In T 759/08, it was furthermore held that common general knowledge of the skilled person does not bring about a change in the legal and factual framework of the proceedings.
Those three decisions are supplementary reasons to admit D20-D22, representative of the common general knowledge, in the appeal procedure.
On the procedure
ISR established by the EPO mentioned 2 Y and 1A documents.
D9=WO 2005/085329 used as CPA in the present decision, does not figure on the ISR.
Comments
Leave a comment