The patent relates to a novel protocol for preparing sequencing öibraries.
Brief outline of the case
The patent was maintained according to a new MR filed in opposition and the opponent appealed.
The board held that claim 1 as maintained as lacking IS over documents not mentioned in the ESR. The same applied to AR 1 and 2
The board further dismissed an objection under R 106 and eventually decided to revoke the patent.
The case is interesting in view of the decision relating to the admittance and consideration of the proprietor’s submissions on inventive step filed before the OP.
The proprietor’s point of view
In the communication pursuant to Art 15(1) RPBA, the board expressed its opinion on IS in respect of AR 1 and 2.
The proprietor submitted in the reply that its submission was “in direct response to statements made by the board of appeal in its preliminary opinion, which demonstrate an erroneous approach to apply inventive step as a ground of opposition to AR 1 and 2”.
The proprietor argued that “when considering the choice of CPA, rather than assess claim 1 of AR 1 afresh, so analysing the purpose, effect and relevant technical features of the claimed subject matter as a whole, the board has simply assumed that D2 should remain the CPA and then considered the further technical features recited in claim 1 of AR 1 in isolation. Such an assessment is subjective, lacks legal basis and is hence fundamentally flawed”. A similar argument applied to AR 2.
This created an exceptional circumstance, justified herein with cogent reasons, in which these further submissions should be taken into account under Art 13(2) RPBA.
The board’s decision
The board considered said submission as an amendment to the proprietor’s case and its admission was governed by Art 13(2) RPBA.
The board noted that, arguments that, for the purpose of the assessment IS of the subject-matter of claim 1 of the MR, the Y-library preparation method disclosed in document D2 represented a suitable starting point for assessing IS, and when starting from this closest prior art the claimed subject-matter would be obvious to the skilled person, were part of the appeal proceedings by virtue of the opponent’s submissions in the grounds of appeal The opponent also argued in the grounds of appeal that the subject-matter of claim 1 of the AR lacked IS.
Although the opponent did not explicitly repeat that it started from the Y-library preparation method disclosed in document D2 representing the CPA, it is implicit from its content that the appellant’s submission started from the same CPA and partial objective technical problems as had been formulated for the subject-matter of claim 1 of the MR.
Accordingly, the arguments provided in the proprietor’s last submission ought already to have been part of its reply to the appeal, cf. Ar 12(3) RPBA. By the same token, it could not have surprised the respondent that the board in the communication, contrary to the OD, agreed with the proprietor’s choice of CPA for assessing IS of the subject-matter of the MR and of the AR.
With regard to Art 13(2) RPBA, it is irrelevant whether the board’s communication differs from the contested decision. An unfavourable preliminary opinion for a party can, in principle, be expected at any time in the proceedings before a decision is handed down. In fact, it is pointed out in this context that the communication of a preliminary opinion under Art 15(1) RPBA is primarily a procedural measure aimed at facilitating the preparation of the parties for possible OP, and does not imply an “invitation” to further amendments in response, see e.g. decisions T 752/16, Reasons 3.4, and T 1459/11, Reasons 3.2.
It is further incumbent on the parties to submit their arguments in the proceedings in good time, in order for them to be taken into account already in the board’s communication. The parties have a duty to conduct appeal proceedings diligently and expeditiously, for reasons of fairness to the other parties, but also to bring the proceedings to an end within a reasonable period of time. Art 13(2) RPBA sanctions this duty to contribute to swift conduct of the appeal proceedings, and thus the obligation, in the case at hand, to submit any line of argument as to inventive step in good time before the communication (see decision T 2843/19, Reasons 3.3. This has not happened in the case at hand.
Therefore there are no exceptional circumstances warranting taking into account the respondent’s last submission under Art 13(2) RPBA.
Comments
The present decisions links the third level of convergence according to Art 13(2) with former case law under the RPBA 07. According to this case law a communication of the board is not an invitation to file further submissions or requests. There are numerous decisions of this kind.
The board reminded that
- it is irrelevant whether the board’s communication differs from the contested decision
- an unfavourable preliminary opinion for a party can, in principle, be expected at any time in the proceedings before a decision is handed down.
This is the more so the case when there is no change in the factual and legal situation before and after the communication under Art 15(1).
On the procedure
All the documents leading to the revocation were not mentioned in the ESR and the decision of the OD has benn set aside.
https://www.epo.org/en/boards-of-appeal/decisions/t211692eu1
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