The patent relates to a detector and the detection of blood and biological marker substances in optically dense and clear liquids or in secondary liquids used in blood purification machines, i.e. dialysis machines..
Brief outline of the case
The patent was maintained according to AR2 and both the proprietor and the opponent appealed the decision.
The board decided that claim 1 as granted = MR and of AR1’ap=AR2op, respectively lacked N and IS over D9=WO 2004/057313, not mentioned in the ISR established by the EPO.
In appeal, the proprietor filed AR 2’ to 5’, whereby AR 2’ corresponded to AR 4 filed during the OP before the OD.
AR 3’ was admitted in the procedure under Art 13(2) RPBA 20.
The case was remitted to the OD for further prosecution on the basis of AR3’.
The case is interesting as far as the non-admissibility of AR2’ap=AR4op is concerned, as AR2’ was not admitted under Art 12(4) RPBA20.
Admissibility of AR 2’ – The proprietor’s point of view
The proprietor argued before the board that AR 2′ should be admitted as it had already been submitted in the opposition proceedings.
The proprietor disputed that AR 2′ was not convergent with the higher-ranking request. The subject-matter of claim 1 of AR 2′ developed in the same direction as the subject-matter of claim 1 of the MR and of AR1′, namely in the direction of a more precise definition of a blood analysis device.
Admissibility of AR 2’ – The board’s point of view
Although AR 2′ was already filed in the first instance proceedings, its admission to appeal proceedings is not automatic. The OD did not have to decide on its admissibility in opposition proceedings, nor was there any debate on the patentability of the claimed subject-matter of the then AR 4.
Rather, the OD decided during OP to maintain the patent on the basis of the then higher-ranking AR 2.
The board held that, should AR 2′ be admitted in appeal proceedings, the board would not be reviewing a decision already taken at first instance, but examining a new set of claims for the first time. The board therefore reminded that under Art 12(2) RPBA20, the primary objective of the appeal proceedings is to judicially review the contested decision.
This is a first reason why AR 2’ could not be admitted in appeal.
The board concurred with the opponent that AR 2’=AR 4 having been filed during the OP before the OD, it was late filed.
Furthermore the board held that the then AR 4 was, contrary to the submissions of the proprietor, not convergent with the other requests on file.
For the board, AR 2′ was thus not admissibly raised and pursued in first instance opposition proceedings due to lack of convergence.
This is a second reason why AR 2’ could not be admitted in appeal.
Therefore, the Board exercised its discretion under Art 12(4) RPBA20 not to admit AR 2′ into the proceedings.
Admissibility of AR 3
The patent was maintained on the basis of the current AR 1′. In this respect, the proprietor had no reason to file an AR already in the first instance proceedings or with the statement of grounds of appeal.
Only after the opponent had filed an appeal against the maintenance of the patent could the proprietor see the need to file AR to overcome, inter alia, the objection of lack of IS with respect to claim 1 of AR 1′. The patentee did so by filing AR 1 to 6 in its response.
Claim 1 of AR 3′ is merely a combination of claim 1 of AR 2 and 4, which were filed with the response and are identical to AR 2 and 4 of the first-instance proceedings. This means that claim 1 of AR 3′ only has features that have been known to the opponent since the first instance proceedings.
Admissibility of non-convergent late filed AR
The key information from the present decision is that the criterion of convergence applies to late filed requests, even if those requests have been filed in first instance, but not discussed, and filed again when entering appeal.
In view of the RPBA20/21 an OD might have to admit a number of divergent requests filed within the time limit under R 116(1), provided they are all properly substantiated. Facing an opposition, it is legitimate for the proprietor to envisage different possibilities, which might not be convergent
Should they not be substantiated or filed outside the time limit under R 116(1) non-converging requests have thus have little chance to be admitted by an OD, but, most likely, no chance at all to be admitted in appeal.
Admissibility of AR not discussed in first instance
Whether it is correct in general not to admit in appeal an AR which has been filed in first instance, but not discussed there in view of the allowability of a higher ranking AR is disputable. When a higher ranking request is deemed allowable by the first instance, claiming that no decision on this request was taken by the first instance for not admitting a further AR under Art 12(2) or (4) RPBA20 is not an appropriate position for a board.
When the situation is such that the proprietor had no reason to file a further AR in first instance, it should be admitted in appeal and the case remitted to the first instance for further prosecution.
Luckily, in the present decision, this was the case of AR3’.
On the procedure
The patent should not have been granted in the form it was. D9 and the patent have IPC/CPC classes in common. It should thus have been found during the International Search.
Since the decision of the OD was set aside, the decision of the OD belongs to the 50%+ decisions in this case.