EP 3 395 408 B1 relates to patient monitoring, and in particular to patient monitoring suitable for stereotactic radiation therapy.
Brief outline of the case
The patent was maintained according MR3 filed during OP.
The opponent appealed.
The board decided that the OD committed a SPV.
The reason why the OD committed a SPV are interesting.
The opponent’s point of view
According to the opponent, a SPV occurred, since in the decision under appeal, the OD did not deal with the objections under Art 83 and 84.
The opponent submitted that there was a continued discussion, wherein after each deliberation or new MR, clearly only any additional attacks were discussed.
As it is common practice, all the previous attacks, which had either already been overcome in view of the OD or on which the OD did not follow the opponent, were of course not discussed again in detail, as the OD had already provided their opinion on such previous attacks, which had of course not changed.
Nevertheless, all of such previous objections were of course maintained. It is clear from the minutes that none of the objections raised throughout the discussion were in any way withdrawn.
It was always made clear that for procedural efficiency only “additional objections” not decided upon until that point are to be discussed, i.e. that any previous objections were maintained also for the two MR filed during the OP.
The opponent had requested a correction of the minutes of the OP before the OD
The aim of the correction was to state that for the two new MR filed during the OP only additional objections have been discussed, which have not yet been discussed so far and that the previous objections with respect to sufficiency and clarity have been maintained by the opponent. The OD declined the correction of the minutes.
The proprietor’s point of view
The proprietor argued that, during the OP, the opponent only raised objections under Art 56 in response to MR 3.
This means that no objections under Art 83 or any objection under Art 84 were raised by the opponent against this new MR.
The proprietor concluded that no SPV occurred.
The proprietor was also of the opinion that the right to be heard cannot be regarded as being violated if the opponent no longer maintains objections raised in OP against a previous request for another request discussed said OP.
It is the responsibility of the opponent and of the OD or the proprietor to express which particular objections that the opponent would raise against the different requests discussed during the OP. A failure by the opponent to maintain an objection when discussing a new request, and merely raising other objections, does not constitute a violation of the right to heard.
The board’s decision
The board noted that with the notice of opposition, the opponent invoked grounds for opposition under Articles 100(a),(b), and (c) EPC and substantiated each of them in detail.
During OP before the OD, the opponent provided arguments as to why the amendments to the first amended MR=MR1 did not overcome their objections of insufficient disclosure.
According to the minutes of the OP, the chairman announced first the conclusion of that claim 1 MR1 was sufficiently disclosed, and later that it did not meet the requirements of Art 84.
Since according to the chairman none of the AR on file appeared to overcome the clarity objection, the proprietor was asked how he would like to proceed. The proprietor replied that he would like to file an amended set of claims based on the MR=MR1 on file.
The chairman stated that for the sake of procedural efficiency, the proprietor could file the new request later and opened the floor for discussing N of claim 1 of MR1 on file.
Then, novelty of MR1 was discussed and the OD concluded that claim 1 lacked N.
The proprietor filed a MR2, based on MR1.
After a discussion with the parties, the OD admitted MR2 into the proceedings, but concluded that it lacked as well N.
Then, the proprietor submitted a MR3, based on AR 10.
The parties discussed IS of MR3, and the chairman announced that the patent could be maintained according to MR3, after an adapted description had be filed by the proprietor.
The board’s actual decision
When only dealing, in the decision under appeal, with the question of IS for MR3, the OD committed SPVs, because they did not provide an adequate reasoning with regard to other objections raised during the opposition proceedings.
The OD, in their refusal to correct the minutes, and the proprietor, in their reply to the statement of grounds, seem to interpret the discussion during OP about a possible lack of IS of MR3 that the opponent had withdrawn their other grounds of opposition.
In the board’s view, a withdrawal of a ground of opposition has to be done unambiguously, either by an explicit withdrawal or by a party’s behaviour or procedural step during the proceedings that made its intention unequivocal, as it was decided with regard to withdrawals of requests.
There is no hint to any explicit withdrawal of a ground for opposition. There is also no hint to an unequivocal behaviour of the opponent that could lead to the assumption that any of the grounds for opposition were withdrawn.
In addition, the way the chair of the OD directed the discussions and the admission of several amended MR, which overcame the ground for opposition previously found to prejudice the maintenance of the patent, leaves no doubt that the discussion following admitting the requests was restricted to objections that had not been addressed or considered previously.
Thus, the opponent’s understanding of the course of the discussion is perfectly justified and there is no room for any contention that the opponent should have explicitly maintained those grounds on which the OD had found in favour of the proprietor.
If the OD was not certain, whether any of the grounds of opposition was withdrawn, they should have asked for clarification and minuted the statement.
In particular, when considering that withdrawing a ground for opposition would mean that the opponent no longer can invoke such ground on appeal, the OD should not have simply assumed such a far-reaching procedural statement.
Providing only a reasoning on inventive step for MR3 in the decision also does not conform with Art 101(3), which also amounts to a SPV.
Comments
First, it looks rather odd for the OD to start a discussion on the N of MR1, when MR1 was deemed lacking clarity. How can a claim be compared with the prior art when it is unclear?
The present decision shows also how important it can be to file a request for correction of the minutes if later a board has to decide upon a SPV. Without such a request, the position of the opponent would have been much more difficult.
The key message from this decision is that, even if the discussion on amended claims continues during OP on other aspects, this does not mean that the originally filed grounds of opposition were abandoned.
Further to the present decision, Reasons 37, in T 2241/19, Reasons 4.7, it was held that the EPO departments have the duty to ensure that any uncertainty with regard to procedural acts of the parties is clarified. All, not abandoned objections raised during the procedure have to be dealt with in the decision. The same conclusion was reached in T 52/15, Reasons 1.7.
Conversely, if it is not clear for a party what the procedure is or how it will continue, it is up to said party to ask for clarification of the matter, especially if no unclarity is apparent either to the other party or to the EPO, cf. T 1063/02.
Comments
Leave a comment