The patent deals with polymer micro encapsulation for controlled release of active ingredients and formulations containing microcapsules.
Brief outline of the procedure
The OD decided that claim 1 as granted was infringing Art 123(2). The same applied to AR 1 and 3-13.
AR2 was not admitted in the procedure by the OD.
The patent was revoked and the proprietor appealed the decision.
With its statement of grounds of appeal, the proprietor filed amended pages 2 to 27 of the description and a set of 45 claims identical to the claims of AR 2 underlying the appealed decision. These documents formed the proprietor’s MR.
The board decided to admit the new MR=AR 2 in opposition, and remitted the case for further prosecution.
Admissibility of the request not admitted by the OD
The opponent’s position
The opponent requested that the MR in appeal not be admitted into the proceedings.
Amendment to the description
The opponent argued that the amendment to §  on page 7 was not present in the description pages filed before the OD. Therefore, the filing of amended page 7 represented an amendment of the appellant’s case within the meaning of Art 12(4) RPBA20.
This amendment should have been filed during the proceedings before the OD, especially in view of the fact that an objection to §  of the patent as granted had been raised in the notice of opposition.
Admissibility of the claims MR=AR2 in opposition
These claims represented an amendment of the appellant’s case within the meaning of Art 12(4) RPBA20 and they should have been filed in a timely manner during the proceedings before the OD. Moreover, the basis for the amended features had not been indicated.
For the opponent, the discretionary decision of the OD met the requirements of both procedural fairness and procedural efficiency. As regards the review of this decision by the board, the opponent referred to G 7/93 (OJ EPO 1994, 775), especially to section 2.6 of the reasons thereof. For the opponent, the EBA clearly stated that when examining a discretionary decision on admittance made by the first-instance department, the conclusion that the board would have exercised its discretion in a different way was not sufficient to overturn the decision. The OD should have a certain degree of freedom when exercising its discretion, without interference from the board.
The board’s position on the amendment of the description
The board reminded that it is common practice in proceedings before the OD that when amended claims are filed, corresponding amendments to the description are carried out only once and if the amended claims are admitted into the proceedings and found to be allowable.
In the current case, claims according to AR 2, corresponding to the claims of the present MR, were filed by the proprietor at the OP before the OD.
Since this claim request was not admitted by the OD, in line with the above-mentioned current practice, there was no need for the proprietor to file description pages in line with this claim request in the opposition proceedings. Hence, the proprietor was not in a situation where it should have submitted an amended description in line with the claims of the current MR before the OD. The proprietor promptly filed description pages in line with the claims of the present MR with its grounds of appeal.
The board acknowledged that the amendment to §  was not dealt with in the appealed decision and thus represented an amendment of the proprietor’s case within the meaning of Art 12(4) RPBA20.
The board held that the amendment to §  is not complex since it merely consists in the deletion of a sentence. Moreover, the amendment was made to overcome the objection raised in the appealed decision that the features expressed by the sentence that has now been deleted were not disclosed in the application as filed. Therefore, the amendment directly addresses an issue leading to the decision under appeal. Finally, no detriment to procedural economy associated with this amendment can be recognised.
Therefore, there are no reasons why description pages 2 to 27 according to the main request should not be admitted into the appeal proceedings.
The board’s position on the admissibility of the claims MR=AR 2 in opposition
AR 2 was examined by the OD as regards its prima facie allowability. Thereafter, the OD decided not to admit the request into the proceedings. This decision on the admittance of what was then AR 2 is part of the appealed decision and thus, contrary to the opponent’s view, the filing of this request as the MR in appeal does not represent an amendment of the appellant’s case within the meaning of Art 12(4) RPBA20.
The board noted that according to G 7/93, a board should only overrule the way in which a department of first instance has exercised its discretion on the admittance of, inter alia, claim requests if the board concludes that the department has done so according to the wrong principles, or without taking into account the right principles, or in an unreasonable way (see also T 879/18 and T 222/16). This case law has been codified in Art 12(6) RPBA20.
At the OP, the OD came to the conclusion that Article 100(c) EPC prejudiced the maintenance of the patent as granted. As regards claim 1 as granted, the OD found that the terms “stereochemical” and “polymeric” in the definition of the compounds of formula (I) in claim 1 (item (c)) did not have a basis in the application as filed.
In coming to this conclusion, the OD deviated from its preliminary opinion, according to which the term “stereochemical” was based on the application as filed, cf. annex to the summons to OP.
The proprietor subsequently filed AR 1. In claim 1 of this request, the objected term “polymeric” was deleted from the definition of the compounds of formula (I) (item (c) in claim 1) and the objected term “stereochemical” was replaced by “stereoisomeric”. Granted claim 15 was deleted.
The OD admitted this request into the proceedings “because the claims are substantially identical to those of AR 5”. However, the prima facie allowability under Art 123(2) was not examined when the opposition division decided on the admittance of AR 1. Eventually, AR 1 was considered not allowable as it infringed Art 123(2).
Thereafter, the proprietor filed AR 2, which corresponds to the current MR. As in the case of AR 1, this request was also based on a previous request, specifically AR 9, in which the feature “in monomeric and/or oligomeric form” was deleted from the definition of the compounds of formula (I) in claim 1.
Even though this replacement could have been made earlier in the proceedings in view of the corresponding objection of the opponent in the notice of opposition (see above), this amendment was motivated by the OD changing its mind.
Moreover, this amendment was straightforward, promptly addressed the objection raised and did not change the subject of the proceedings, as had been recognised by the OD with respect to the admitted AR 1.
However, instead of applying the same criterion as for AR 1 – substantially identical to a previous request and thus no unexpected change of the subject of the proceedings and no prima facie clarity issues – when deciding on the admittance of AR 2, the OD applied the criterion of prima facie allowability under Art 123(2).
In applying this different criterion of prima facie allowability under Art 123(2), the OD considered that AR 2 was not prima facie allowable under Art 123(2).
The board found out that this feature was already present in claim 1 as granted and in claim 1 of AR 1 as filed during the OP and admitted by the OD. More importantly, this feature had never been objected to before under Art 123(2), either by the respondent or by the OD.
In view of the specific case history, the OD should have used the same criteria when deciding on the admittance of AR 1 and 2. Not doing so, and thus basing the decision as regards the two claim requests on different criteria, resulted in an inconsistent approach.
Whilst the board acknowledged that prima facie allowability under Art 123(2) of a late-filed amended claim request may be a valid criterion to be used by the OD when deciding on the admittance of this claim request.
However, using this criterion, to object for the first time at OP to a feature of the late-filed claim request that was already present in higher-ranking claim requests and had never been objected to before, not even when deciding on the allowability or admittance of those higher-ranking claim requests, goes against the principles of fairness and good faith.
The board concluded that the OD, when deciding not to admit the current MR, used the available criteria in an unreasonable way. The OD’s decision thus suffered from an error in the use of its discretion.
For these reasons, the board has decided to overturn the OD’s decision on the non-admittance of what was then AR 2, and to admit the present MR into the appeal proceedings pursuant to Art 12(6) RPBA20.
The decision is interesting for various aspects
When is it necessary to file an adapted description?
If the proprietor is present at the OP an adapted description is only necessary once agreement has been reached on an allowable set of claims. If a set of claims is not allowable or is not admitted by the OD, filing an adapted description is moot.
Re-filing this request in appeal and an adapted description is then not to be considered as an amendment under Art 12(4) RPBA20. The proprietor is entitled to a decision of the board as to the admissibility or allowability of this request. The board might have a different opinion on the topic.
These considerations in opposition apply mutatis mutandis in appeal after examination.
If an applicant/proprietor submits new claims and does not appear or fails to connect, he should not only file new sets of claims, but also submit a description adapted to the respective sets of claims.
In the absence of a complete set of documents, either
- the application is rejected, cf. T 893/01, T 109/02
- the patent is revoked, cf. T 725/00, T 986/00, T1024/18
The same criteria should apply to late filed requests
The board considered that admitting AR 1 but not admitting AR 2 whereby both requests could be considered prima facie not allowable under Art 123(2) was not a proper exercise of the discretion given to the OD.
During one and the same OP the admissibility criteria cannot change between requests.
Should the opposition division not give the reasons for its change of mind in matters of relevance, then it commits a substantial procedural violation, see e.g. cf. T 558/16 to the detriment of the opponent.
In T 754/16, the OD deviated during the OP from the opinion expressed in the annex to the summons. By not admitting AR 7-8 the OD which were a direct response to the OD’s change of opinion, the latter committed a substantial procedural violation.
As a new objection was raised during OP, a request answering the new objection was admitted in the procedure, cf. T 1556/16. In the present case, the objection leading to the filing of AR2 had never been raised before.
The board could thus have considered that the OD had committed a substantial procedural violation by admitting AR 1 and not AR 2. Such a decision can be qualified as arbitrary.
It is bordering on bad faith from the side of the opponent when he considered in appeal that the MR should have been filed before the OD. As the MR=AR 2 in opposition, the proprietor had filed the corresponding request in first instance.
Deletion of features in claims or in the description
It is an established line of case law for a majority of the boards that deleting claims which are objectionable, although representing an amendment pursuant Art 12(4) RPBA20, can nevertheless improve procedural economy.
The present decision applies the same criteria when features are deleted in the claims or in the description.