EP 3 134 551 B1 relates to compositions and methods for enhancing and/or predicting DNA amplification.
Brief outline of the case
The OD maintained the patent according to AR7 and the opponent appealed.
The board held that claim 1 as maintained, i.e. a product claim, lacked N over a document of category X in the ISR.
All AR, with only method claims, were not admitted and the patent was revoked.
We will look here only at the admissibility of AR1.
The set of claims of AR1 is identical to the set of claims of the AR7 except that the product claims were deleted.
The board also rejected a request of the proprietor for a referral to the EBA.
The proprietor’s point of view
The proprietor asserted that deleting entire claim categories from a previously filed request was not an amendment to its case.
The proprietor contested the interpretation of Art 12 RPBA, arguing that the OD had found AR7 to meet the requirements of the EPC.
Since AR7 included the method claims of AR1, the OD had necessarily taken a decision on the allowability of these method claims.
The proprietor further relied on a series of decisions with regard to Art 13(1) and (2) RPBA according to which deleting a claim category, dependent claims or alternatives within claims was not considered an amendment to the patent proprietor’s appeal case. The proprietor argued that this approach a fortiori had to apply to claim requests filed at the beginning of the appeal proceedings.
The board’s decision
The board noted that a set of claims that has never been submitted during opposition proceedings cannot be a request on which the OD’s decision is based.
A set of claims which is filed for the first time on appeal constitutes an amendment to the case within the meaning of Art 12(4), even if the request differs merely in that an entire claim category being deleted.
The OD had never given specific reasons for the patentability of the method claims even though the corresponding claims of the patent as granted had been opposed.
Rather, the OD appears to have derived its decision on the N and IS of the method claims from its finding that the claimed product was novel and inventive. Therefore, there is no stand-alone decision by the OD on the allowability of the method claims that is independent of its findings for the product claims.
Since the OD’s decision with regard to the product claims did not stand up to review by the board, the reasons given in the decision cannot support the patentability of the method claims any longer.
Therefore, examining their allowability would require N and IS to be re-assessed, implying a change of the legal and factual framework of the appeal.
The board noted that several decisions, e.g. T 1480/16, Reasons 2.3; T 981/17, Reasons 3; T 995/18, Reasons 2; T 1151/18, Reasons 2; T 2243/18, Reasons 2; T 1792/19, Reasons 2; T 2201/19, Reasons 5.5, have held that an appeal case has not been amended where deleting claims present in a previously filed set of claims did not alter the factual and legal framework of the case or the subject of the discussions or entail re-evaluating the matters at issue.
However, in the case in hand there is no stand-alone decision by the OD on the method claims, nor any discussion of the opponent’s objections raised in the opposition proceedings against the method claims. In that respect, the circumstances in this appeal are fundamentally different from those underpinning the above decisions and do not fulfil the conditions established in those decisions.
Moreover, more recent decisions have predominantly held that deleting claims present in a previously filed set of claims is to be regarded as an amendment to a party’s appeal case within the meaning of Article 13 RPBA in line with e.g. T 494/18, Reasons 1.3 and T 2091/18, Reasons 4.
For the board, the diverging approaches seem to be converging towards the majority opinion, see in particular T 1800/21, Reasons 3.3 and 3.4 and decisions cited in that decision.
The admittance of AR1, as an amendment to the respondent’s case, is therefore at the board’s discretion, under Art 12(4) RPBA.
The criteria to be taken into account in the exercise of discretion referred to in this provision are the complexity of the amendment, the suitability of the amendment to address the issues which led to the decision under appeal and the need for procedural economy. However, Art 12(6) RPBA should also be taken into account.
The OD’s opinion on the N and IS of the oligonucleotide primers was not directly applicable to the method claims of AR1. The primer oligonucleotides used in the method claims are not the same as those defined in the product claims decided upon by the OD.
The board decided thus not to admit AR 1 under Art 12(4) RPBA and Art12(6) RPBA specifying that AR1 should have been filed in the opposition proceedings. Moreover, admitting this request would neither simplify the proceedings nor serve the interests of procedural economy.
Comments
It can be agreed with the board, that deletion of claims could be regarded as an amendment of the proprietor’s appeal case, and only if there is no change in legal and factual framework of the appeal, such requests should be admitted.
As the method claims were part of the claims deemed allowable by the OD, it is not correct for the board to alledge that the method claims were never submitted during opposition proceedings.
The OD had decided, albeit in a relatively careless way, on the allowability of the method claims.
As the primers were not the same in the products and the method claims, the proprietor can be considered punished due to the slapdash way the OD equated the product and the method claims in respect of N and IS. It is not the proprietor’s fault, if the OD did not find it necessary to issue a stand-alone decision on the method claims.
In view of the circumstances of the case, and of the decision of the OD, the board could have decided to remit for further prosecution. This would have been fair for the proprietor in view of the OD’s mistake.
However, if a board is determined not to see a file again on its desk, then any way will be used to insure that this eventuality will not occur.
A conclusion often drawn in the present blog that procedural case law is not coherent and actually boils down to a lottery is once again exemplified here.
Comments
Leave a comment