EP 3 121 274 B1 relates to a method for predicting responsiveness to the treatment of cancer with a compound inhibiting p300.
Brief outline of the case
The patent was revoked for lack of sufficiency for the patent as granted as well as for AR1-7. AR8 was not admitted by the OD.
In appeal the MR consisted of AR4 filed in opposition.
The board held that the invention in the MR was sufficiently disclosed.
The case was remitted to the OD for further prosecution.
In the present entry we will deal with the remittal and the obiter dictum.
In a separate blog we will discuss the lack of sufficiency.
Remittal
The obiter dictum of the OD played an important role in the respective positions of the parties with respect to the remittal.
Proprietors
The proprietors requested remittal. The proprietors argued that the appealed decision was fundamentally deficient in view of the interpretation of claim 1 by the OD. This amounted to special reasons for remitting. Furthermore, the question of IS had not been discussed at the OP before the OD, and the latter did not provide a decision on IS of the main request.
Opponent
The opponent objected to a remittal essentially because the request for remittal was late-filed and hence inadmissible pursuant to Art 13(2) RPBA and because there were no special reasons justifying remittal.
The discretionary decision under Art 111(1) to remit a case can be taken ex officio by the board at any time of the appeal proceedings and is therefore also not dependent on any request by a party.
The board agreed with T 1006/21, Catchword 1 and Reasons 23 and 24, and with T 139/20, Reasons 4.4, that a request for remittal made by a party is therefore not subject to the provisions of Art 12 and 13 RPBA.
There was thus no reason to disregard the proprietors’ request for remittal.
Obiter dictum
OD
In the obiter dictum, the OD stated that the same findings underpinning the lack of sufficiency of disclosure under Art 83 with regard to independent claim 1 were relevant for the assessment of IS under Art 56 of the other independent claims, and that the assessment under Art 83 or 56 remained factually the same, while formally it may differ.
Proprietor
The obiter dictum on IS did not go through all arguments and it especially did not deal with the question of non-obviousness. Thus, should the board not remit the case, it would have to decide for the first time on appeal on the question of inventive step. This would amount to an undue burden for the board. The question of lack of sufficiency was fundamentally different from the one of lack of IS.
Opponent
The question of lack of IS, despite not formally decided by the OD, was based on the same factual situation and arguments as the objection of insufficiency. This was confirmed by the obiter dictum provided in the OD’s decision, so that the board would have had no undue burden in deciding the matter.
Board
The board found that, as a matter of principle, parties cannot rely on orbiter dicta as if they were fully reasoned decisions.
An obiter dictum is any general statement, either implicit or explicit, in a decision which does not constitute a ratio decidendi of said decision.
Accordingly, observations in an obiter dictum do not, by definition, form part of a decision. While obiter dicta may be sometimes included in decisions of EDs and ODs in order to avoid remittal, it is not excluded that, depending on the circumstances, a remittal of the case is anyway deemed appropriate, despite the presence of an obiter dictum. Therefore obiter dicta cannot raise the expectation on the parties that there’s indeed a decision on a certain issue.
From a legal point of view obiter dicta have no significance for the decision of the specific case and have no binding force. They normally deal with issues that were not raised in the proceedings as a whole, or, as in the present case, with issues on which a decision did not actually have to be made.
The board was not convinced that the mere fact that the findings in the context of sufficiency were relevant for the assessment of IS was sufficient to avoid remittal.
On the one hand, sufficiency of disclosure is concerned with whether the patent application provides sufficient information for a skilled person in the art to carry out the invention.
On the other hand, the assessment of IS is concerned with determining whether the claimed invention is obvious to a skilled person, given the state of the art at the time the invention was made, whereby it involves an analysis of several essential aspects when applying the problem solution approach.
In the “obiter dicta” section, the OD remained silent on all the other aspects required for a full assessment of IS and did not provide a full reasoning as to whether the requirements of Art 56 were met, in particular it did not discuss obviousness and did not draw any conclusion on inventiveness.
Comments
Remittal
The present board agreed with T 1006/21, commented in the present blog and with T 139/20.
There are however other boards which do not agree with the present one and with T 1006/21. This was for instance the case in T 458/22, commented in the present blog, as well as in T 1774/21, also commented in the present blog.
The days the boards of appeal will deal with procedural aspects in a convergent and coherent way will be welcomed by appellants and respondents.
With due respect to the independence of the boards, it should not be a lottery for the parties.
Obiter dictum
One key message is that parties cannot rely on orbiter dicta as if they were fully reasoned decisions.
Whilst an obiter dictum might be useful in examination, its usefulness in opposition is really debatable.
In the present case, the obiter dictum did not bring matters forward. It was at best incomplete as noted by the board.
According to G 1/03, or for instance T 2001/12, cf. Catchword, it might well be true that in claims in which an effect to be achieved is mentioned as a functional limitation in the wording, the right objection is an objection of lack of sufficiency. In the absence of an effect mentioned in a claim, the right objection is an objection of lack of IS.
When dealing with a lack of sufficiency, what primarily matters is the whole content of the application as filed, and no prior art can help if the disclosure is deficient.
When dealing with a lack of IS, prior art is of utmost importance.
The OD did no more than repeat what was said in G 1/03, OJ 2004, 413, Reasons 2.5.2. This was way insufficient to properly deal with lack of IS.
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