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 opponent 1 appealed.
Opponent 2 entered the appeal as party as of right.
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Later AR4 was made the MR and all other requests were withdrawn.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.
In the present blog entry we will concentrate on the admissibility of the submissions of the party as of right.
The proprietor’s point of view
The statement of grounds of appeal filed (SGA) by opponent 1 should constitute the opponents’ complete appeal case. This established the framework for the appeal.
As opponent 2 did not file an appeal, their response to the notification of the SGA should not be considered a response under Art 12(1) RPBA. Thus, opponent 1 should not be allowed to broaden the scope of the appeal with opponent 2’s submissions.
Therefore, submissions of opponent 2 concerning the lack of N in view of D27, and the lack of IS in view of D6 and D31, should not be admitted into the appeal proceedings.
Furthermore, the arguments relating to claim interpretation filed by both opponents should not be admitted, as these could have been filed during the opposition proceedings and considered in the decision under appeal.
In view of the amendment to claim 1, claim 7 had been amended to refer to an “immunogenic composition” and to include an additional process step. These amendments further clarified that the invention related to the isolated HCMV pentameric complex as claimed to be used as an antigen within an immunogenic composition.
Opponent’s 1 point of view
The MR corresponded to AR1 filed with the proprietor’s reply to the appeal. Claim 1 corresponded to claim 5 in the claims as granted.
No AR had been discussed during opposition proceedings. Therefore, they were not addressed in the decision under appeal, and there had been no opportunity to address them when filing the appeal.
In the appeal proceedings, the AR were first presented with the proprietor’s reply to the appeal. Moreover, the MR should be considered as having been filed only on 03.12.2025, despite having been filed as AR1 with the reply to the appeal in February 2022.
For opponent 1, a request can only be considered filed once it has been substantiated. In conclusion, the proprietor amended their case and the opponents could not anticipate which claims the proprietor would pursue. Thus, these requests were addressed at the first possible opportunity.
The fact that the SGA did not mention claim 5 when specifying which claims as granted were not novel, did not exclude that also claim 5 as granted was not novel.
The subject-matter of claim 1 of the MR was not novel in view of the disclosure in each of documents D6 and D13. Claim 1 corresponded to claim 5 of the request held allowable by the opposition division. Although this claim was not specifically addressed in the SGA, it was not different to claim 1, directed to the isolated complex.
The opponent requested the board to consider ex officio novelty or alternatively remit the case to the opposition division
The board could of its own motion examine novelty of the claims of this request, see T 862/16 and CLBA V.A.3.3.1. Art 12(1) RPBA placed restrictions on the parties but not on the board. It could also not take precedence over the EPC, as confirmed in decision R 16/13.
Moreover, 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.
Opponent’s 2 point of view
For any of the AR filed with the SGA of opponent 1, the case should be remitted to the OD, as they had not been discussed during opposition proceedings.
Claims 1 to 9 of the MR were not limited by any use of the isolated complex or composition comprising it.
Therefore, also documents D6 and D13 could be taken to represent the CPA. For opponent 2, the claimed subject-matter did not involve an IS.
The claimed subject-matter was also obvious from the disclosure in document D31.
The board’s decision
The board has no power to decide and hence no authority to “examine the facts” beyond the extent to which the patent is attacked in the notice of opposition. Likewise the EPO has no competence to deal with non-opposed subject-matter.
With regard to opposition appeal proceedings, in addition the SGA determines the object of the appeal proceedings and the legal and factual framework for the review of the appealed decision by the board. In other words, the SGA determines the extent to which amendment or cancellation of the appealed decision is requested
The appellant, opponent 1, can adduce new facts and evidence during appeal proceedings, but their consideration will then be subject to the discretion afforded to the board under Art 114(2) and Art 12 and 13 RPBA to reject late-filed submissions.
As regards a non-appealing party, the provisions of Art 107, second sentence, guarantee its right to participate to pending appeal proceedings. However, they do not provide it an autonomous right to have requests which go beyond the scope of the appeal as defined by the appellant’s SGA, decided by the board, as a direct consequence of G 2/91, Headnote 1. By not filing an appeal, a non-appealing party has not contested the findings of the OD, beyond the framework of the appeal filed by the appellant.
In the present case, with the SGA, opponent 1 contested the decision under appeal in relation to N in view of documents D6 and D13, and in relation to IS with D13 being the CPA. Moreover, in the context of N, the objections to then MR specifically identified claims 1, 2 and 8 only. Novelty of claim 5 of the then MR was not objected to.
This determined the legal and factual framework for review by the board.
Despite other attacks having been raised in the notices of opposition, also with regard to different subject-matter, i.e. further claims, and despite the OD having decided on these, opponent 1 did not contest the decision regarding the other attacks on N or IS.
The submissions of the party as of right-opponent 2 included objections under lack of N in view of document D27 and lack of IS where D6 and D31 were taken to represent the CPA. Since the OD took a decision on these lines of attack in favour of the proprietor, an appeal should have been filed to have these findings reviewed, rather than merely contesting them in the reply to the SGA.
However, the appeal of opponent1 did not contest the decision in these respects, therefore these objections are outside the legal and factual framework for review by the board. Their consideration is in principle not excluded but is subject to the discretion accorded to the board under Art 114(2) and Art 12 and 13 RPBA.
The same applies to the opponent’s 1 particularly to the fact that party as of right-opponent 2’s submissions were agreed upon and adopted by opponent 1.
It is undisputed that re-submitting objections of lack of N and of IS against non-appealed subject matter, after having indicated the intention not to contest the findings of the OD in this respect, is an amendment to the appeal case, which is subject to justification.
The board noted that opponent 1 provided no justification for not having raised these objections with the SGA, and the board cannot see any either.
Moreover admitting these several additional attacks would be detrimental to procedural economy and unfair for the proprietor, who relied on these parts of the appealed decision not having being contested.
Accordingly, the objections filed by opponent 1 after filing his SGA were not admitted into the appeal proceedings. The same applies to the corresponding objections filed by the party as of right, opponent 2.
Comments
In view of G 2/91, a person who is entitled to appeal but does not do so, and instead confines himself to being a party to the appeal proceedings has no independent right to continue the proceedings if the appellant withdraws the appeal.
In other words a non-appealing opponent is considered like an intervener having only entered in appeal when the appeal is withdrawn, see G 3/04 and G 2/24.
An appealing opponent can attempt to take over the submissions of a party as of right. Their admissibility is then in any case subject to the provisions of Art 12 and 13 RPBA.
On the other hand, in T 1973/23, it was held that the interpretation of a claim is a matter of law which has to be determined by the board independently of the submission of the parties. If the non-appealing party comes with a different, but technically sensible interpretation of the claim, it cannot be dismissed at once.
Thus, when the opposition has been rejected, when entering appeal, an appealing opponent should raise all objections he thinks fit, and not bank on what a non-appealing opponent might submit.
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