EP 2 869 843 B1 relates to complexes of cytomegalovirus proteins and their subsequent use in vaccines.
Brief outline of the case
The opposition was rejected and the opponent 1 appealed.
In appeal the proprietor filed AR1-6, corresponding to AR 4-9 in opposition.
Later AR4 was made the MR and all other requests were withdrawn.
The proprietor withdrew its request for OP and was deliberately absent from the OP.
The board decided maintenance according to the MR.
The case was remitted to the OD for adapting the description.
This will the topic of the present blog entry.
Opponent’s 1 point of view
For opponent 1, the MR should not be admitted since it did not include an adapted description and was thus incomplete. As the proprietor was not present at the OP, they could not complete it either.
Therefore, the board could not reach a final decision. The opponent referred to T 1194/08 and CLBA, 10th ed., 2022, V.A.5.5.4a.
The board’s decision
The opponent referred to the 10th ed., 2022, V.A.5.5.4a. That section deals with the consequences for an applicant or patent proprietor of its absence at OP. In case of amendments, this party must expect that a decision may be based on objections which arise in their absence. This includes also objections to admittance of amended claims. Further, this party cannot rely on the case being remitted to the OD for adaptation of the description.
The board noted that there is also a whole body of decisions of the boards of appeal in which the cases where remitted to the OD for adaptation of the description to the claims found allowable.
This practice is common where the patent proprietor attends the OP. The board sees no reason to deviate from it where the proprietor does not attend the OP. Decisions addressing requests to not admit a set of claims due to lack of an adapted description, where the board acknowledged the practice of allowing an adapted description to be filed once there is an allowable set of claims, possibly before the OD, include T 0807/16, Reasons 1.4, T 146/17,Reasons 1.2 and 1.3, and T 155/20, Reasons 1.4.
The board held that, in view of this long-standing practice, the proprietor cannot be expected to file an amended description until an allowable set of claims is found. Taking into account that the board had not indicated prior to the oral proceedings that it intended to deviate from this established practice, applying the principle of legitimate expectations, the board decided that the lack of an adapted description constituted no obstacle to the admittance of the request into the appeal proceedings.
Comments
The present decision has a direct link with the topic at stake in referral G 1/25 as it deals with the adaptation of the description. As the referring decision was not issued before 29.07.2025, it was not necessary for the board to envisage a stay of the proceedings. Some boards also consider that only the referring board should stay similar cases.
Proprietor present at the OP
If the proprietor is present at the OP, it was held in T 2178/17, Reasons 6.3.3, the filing of the amended description does not generally constitute an amendment to the patent proprietor’s appeal case under Art 12(4) or 13(2) RPBA.
In T 2818/19, Reasons 7, it was also held that Art 13(2) RPBA does not apply to the amended description filed during OP.
Absence of the proprietor at the OP
If a party duly summoned to OP, is deliberately absent, it should be prepared to bear the consequences.
If the proprietor is deliberately absent and has not filed an adaptated description for all the AR, the deciding body is actually obliged to delay the issuance of the decision. This is not compatible with procedural economy. In the absence of the proprietor and of an adapted description, the corresponding AR should be considered not admissible, as no final decision is possible.
In the absence of a complete set of documents, and in the absence of the proprietor at the oral proceedings, the patent is revoked, cf. T 1024/18, Reasons 3.1.4,
T 1579/17, Reasons 12.3, T 109/02, Reasons 4.2.
Very lenient position of the board in the present case
In the present case, it can be considered that the board was very lenient towards the proprietor. Whilst it can be accepted that in case of a plurality of AR, it might understanble for a proprietor to only to file an adapted description when an allowable set of claims has been decided.
In the present case, there was only one AR to be decided, AR4 in opposition=MR in appeal. It is difficult to see why the proprietor was not in a position to file an adapted description for a single request.
From the communication under Art 15(1) RPBA it was clear that the board was inclined to the conclusion that a pentameric complex as defined in claim 1 is provided in D6 and that claim 1 as granted was not novel.
This is a further reason to consider that the board was overly lenient towards the proprietor.
Diverging case law
The present board acknowledged that there are two distinct lines of case law in the absence of the proprietor at the OP. In one of them boards decided that, in the absence of the proprietor and in the absence of an adapted description, the patent ought to be revoked. In the other, boards decided that the case could be remitted.
The present board was in favour of the second line of case law.
The present decision shows, once more, that the procedural case law of the boards is not coherent.
However parties to the appeal procedure are entitled that similar procedural situations should be dealt with in a similar manner.
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