EP 2 299 938 B1 relates to a collapsible and re-expandable prosthetic heart valve cuff design.
Brief outline of the procedure
The OD decided that claim 1 as granted lacked N over D2=WO 03/003949. As AR1-3 infringed Art 123(2), the OD decided maintenance according to AR4.
In opposition, the proprietor filed no less than 15 AR.
Both proprietor and opponent appealed.
The board dismissed both appeals.
When entering appeal, the proprietor changed the order of AR, compared to the order before the OD.
AR1-2 in appeal were not admitted under Art 12(4) RPBA..
The proprietor’s point of view on the admissibility of AR1-2
AR1-2 should be admitted into the appeal proceedings.
They had been filed in the first-instance proceedings, thus they were not entirely new. In the interest of procedural economy they had not been discussed during the first-instance proceedings.
Claim 1 of AR1 recited a feature of claim 8 as granted. This way of amending a claim by combining it with a dependent claim was a natural fall-back option.
Claim 1 of AR2 included a feature based on the description, page 14, lines 21 to 24, of the application as filed.
If AR1-2 had been filed during the first-instance proceedings, the OD would have admitted them.
Moreover, the amendments with respect to claim 1 of the patent as granted were not complex, established N and IS, and contributed to procedural economy by solving the N issue with respect to D2.
Hence, AR1-2 should be admitted under Art 12(4) RPBA.
The opponent’s point of view on the admissibility of AR1-2
AR1-2 should not be admitted into the appeal proceedings.
After the discussion of N in relation to the patent as granted in the OP before the OD, the proprietor decided to rank these requests lower than the request eventually found allowable by the division.
Hence, it deliberately avoided a decision on current AR1-2.
Moreover, these requests were procedurally complex to treat. For example, the feature of the thickness of the second cuff portion, which had been central to the discussion before the OD, was not present in their respective first claims.
The board’s decision on the admissibility of AR1-2
AR1-2 correspond to requests which, in the final requests during the first-instance proceedings, ranked lower than the request found allowable by the OD.
The fact that the proprietor presented these requests on appeal before the request found allowable by the OD is an amendment of the proprietor’s appeal case within the meaning of Art 12(4) RPBA.
The board noted that the proprietor changed the ranking of its requests during OP before the OD, which actively avoided a first-instance decision on current AR1-2.
Admittance of these auxiliary requests on appeal would have been contrary to the primary object of the appeal proceedings, which is to review the decision under appeal in a judicial manner, cf. Art 12(2) RPBA.
Moreover, AR1-2 diverge from the requests considered during the first-instance proceedings. As the opponent observed, they omit the feature of the second cuff portion being thicker than the first cuff portion, present in all the AR considered by the OD, which correspond to current AR3-6 in appeal.
The admittance of AR1-2 would have therefore shifted the focus of the discussion, which would have had to consider new aspects for the first time. This would have been detrimental to procedural economy.
Under these circumstances, the board held that it was irrelevant whether AR1-2 could be considered a natural fall-back position, as suggested by the proprietor, or whether the OD might have admitted them.
AR1-2 were thus not admitted into the appeal proceedings under Art 12(4) RPBA.
Comments
The key message to be gained from this decision is, upon entering appeal, do not change the order of the requests as dealt with by the OP, especially if the remaining requests were not dealt with by the first-instance division.
If, on top, those requests are not converging with those dealt with by the OD, they will not be admitted also for this reason.
In general, non-converging late filed requests are not admitted in procedures before the EPO, be it in first instance or in appeal. See T 2472/18, Reasons 2.2, T 1529/19, Reasons 6.2 or T 0815/18, Reasons 5.
Reordering requests during OP before a board leads to them not being admitted. See T 622/23, commented on this blog.
On the procedure
Although the ISR set up by the EPO mentions 3 documents of category X, D2=WO 03/003949, is missing on the ISR.
Both D2 and the patent at stake EP 2 299 938 B1 bear the same IPC class A61F2/24. The IS was carried out in A61F.
It is thus surprising that D2 was not found during the IS
It is also interesting to note that the date of filing is 15.07.2009, and the grant was published on 03.03.2021, whereby the entry in the European phase took place on 22.12.2010.
As the examination took so long, the applicant was able to file no less than 9 divisional applications.
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