The patent relates to a coated coronary stent and to a method for coating a coronary stent.
Brief outline of the case
The opposition was rejected and the opponent appealed.
The stent according to claim 1 as granted comprises a stent framework and a macrolide immunosuppressive drug-polymer coating, wherein at least 50% of the drug is in crystalline form.
The board held that claim 1 as granted, relating to a stent, lacked IS over D2+D1.
The proprietor requested remittal to the OD for the examination of the AR in case its MR were not allowed. The board did not allow this request for remittal under Art 11 RPBA.
The board decided to maintain the patent according to AR1 filed during the OP before the board and admitted under Art 13(2) RPBA. In AR1 all product claims, relating to a stent, were deleted.
Claim 1 of AR 1 is identical to independent claim 17 of the patent as granted. The remaining 10 claims are identical to claims 18 to 27 thereof.
The case is interesting in that it shows a new way of deal with requests in which claims have been deleted.
The opponent’s grounds of opposition and its grounds for appeal
In the grounds of opposition, independent claim 17 was attacked for lack of IS. In the impugned decision, the OD specifically addressed objections based on Articles 100(a) and (c) which were raised against claim 17 as granted.
In the statement setting out the grounds of appeal, the opponent reiterated its objections and argued that the method according to claim 17 of the MR was not based on the application as filed, cf. Art 100(c), that the claimed invention was not sufficiently disclosed, cf. Art 100(b), and that the method according to claim 17 was not based on an IS, cf. Art 100(a) and 56. .
The board’s decision
All the issues to be discussed for AR 1 would also have had to be discussed for the MR if claim 1 had been found to involve an IS, a not implausible outcome in view of the findings of the contested decision.
The filing of AR 1 during the OP before the board does not bring in unexpected new issues to be dealt with. The substance of this request – i.e. the claimed subject-matter and the attacks against it – is fully encompassed by both the opponent’s and the proprietor’s initial appeal case within the meaning of Art12(1 to 3) RPBA.
The request certainly limits the potential issues for discussion. This means that, in view of the totality of the facts of the present case, the filing of this request, although formally an amendment and as such potentially subject to the strict provisions of Art 13(2) RPBA, in substance does not constitute an amendment of a party’s case within the meaning of Art 12(4) RPBA.
It rather constitutes a partial abandonment of the initial appeal case.
For the board, there was no apparent reason not to admit AR1 under any of the Art 12(5), 13(1) or 13(2) RPBA, and the board decided to admit the request under its discretionary powers pursuant to Art 13(1) RPBA.
The board referred to a similar decision in T 2295/19, albeit under Art 13(2) RPBA and with a different reasoning, see Reasons 3.4.1 to 3.4.14 and the further decisions there cited.
For the board, the deletion of claims is not excluded from the scope of the term “amendment” in Art 13 RPBA.
The impact of a particular change to the appeal case on procedural economy is not a criterion for deciding whether that change is an “amendment” within the meaning of Art 13 RPBA.
Rather, the impact on procedural economy is a criterion when a board, at the next step of the assessment, exercises its discretion to decide whether a change that has already been qualified as an “amendment” is to be taken into account.
The present decision is interesting in that although the board found the deletion of claims to constitute “formally” an amendment to the proprietor’s case, it was not an amendment in “substance”. It was rather a partial abandonment of the initial appeal case of the proprietor.
When it comes to deletion of claims during appeal, further to the category amendment or not amendment, we have a new category, i.e. partial abandonment of the proprietor’s appeal case.
Economy of the procedure by deletion of claims was mentioned by the board, but as a further step when deciding to take into account the amendment representing the deletion of claims.
In spite of all, maintenance of a patent when not allowable claims are deleted should always be possible. On the other hand, deletion of not allowable claims is certainly favourable to procedural economy.
Legal members of boards will always surprise us, but the present decision does not really improve the situation. The present board has created a new category of amendments: “formally yes”, but “in substance no”.
T 2295/19 was not commented as such in the present blog, but mentioned in the post relating to T 602/21.
On the procedure
The CPA D2=WO 00/32238 was mentioned neither in the ISR established by the USPTO nor in the SESR. D1=EP 1 810 665 was neither in the ISR nor in the SESR.
In view of an objection under R 62a, the search was incomplete.
D2 is classified inter alia in A61L29/08 and A61L29/16.
D1 is classified inter alia in A61L 27/54, A61L 31/16 and A61L 33/00.
The patent at stake is classified inter alia in A61L 2/00, A61L 31/10 and A61L 31/16.
The SESR was carried out in A61L.
The decision of rejection of the OD was set aside as all product claims were lacking IS.