EP 2 575 770 B1 relates to processes for making haemostatic compositions in storage-stable form.
Brief outline of the case
In T 2242/19, the revocation of the patent was set aside, and the opposition proceedings were reopened.
In a second decision, the OD decided maintenance according to AR2.
Both proprietors and opponents appealed.
The BA decided maintenance according to AR8 as all preceding requests were not allowable for lack of N.
In the context of the issue of N and in particular the discussion regarding the interpretation of the terms “coating” and “coated” used in the claims, the proprietors requested the board to stay the proceedings in view of the pending referral G 1/24.
As the board decided on N, the proprietors filed an objection under R 106 which was dismissed.
The proprietors’ point of view on the stay
The proprietors argued that, not considering the description when construing the claims for assessing N and IS in the present case would amount to anticipating the answers of the EBA. A stay of the proceedings would therefore be justified to ensure that the case was adjudicated based on a stable and predictable legal framework.
The proprietors referred to T 166/84 and section V.A.11.6.15 of the CLBA, 10th edition which concern the stay of first instance proceedings when a referral to the EBA is pending.
The proprietors’ argumentation under R 106
The proprietors considered that, rejecting the request for a stay of the proceedings constituted a substantial procedural violation. They filed an objection under R 106 requesting to rectify this decision.
The proprietors supported their objection under R 106, that the finding of lack of N of claim 1 can only be upheld if the questions referred to the EBA in G 1/24 are to be answered as “no”, “no”, “no”.
This finding of lack of novelty of claim 1 amounts to anticipating the answers of the EBA The EBA, has given no indication whatsoever on how it intends to answer these questions.
The proprietors have therefore been deprived of their fundamental right to have their case adjudicated based on a stable and predictable legal framework.
This unfairly prejudices the rights of patent proprietors, and constitutes a SPV.
This finding based on unsettled legal interpretations would also infringe the ECHR, specifically with regard to Article 1 of Protocol No. 1, which enshrines the right to property.
The opponents’ point of view on the stay
A stay of the proceedings was not justified since the answers of the EBA to the questions submitted in G 1/24 were not decisive for the case.
Whether the description was taken into account or not to construe the claims, their scope remained the same because paragraph [0014] did not provide any definition of the terms “coating” or “coated” but merely a specific embodiment and preferred features of the claimed process and product.
The board’s decision on the stay
The board noted that only the board having referred questions to the EBA is obliged to stay the proceedings, and referred to Art 112(3).
There is no legal basis in the EPC nor in the RPBA requiring that any other board stays its proceedings to await the outcome of the proceedings before the EBA. The decision whether or not to stay the proceedings in such cases is thus a discretionary one.
The board held that the strict approach taken in T 166/84, namely to stay the proceedings whenever the outcome of the proceedings depends entirely on the outcome of the referral, has been applied by some boards in proceedings before them and referred to e.g. T 426/00, T 1875/07 and T 1044/07.
Other boards put into question, for lack of a legal basis, the above approach and considered it not to apply it to proceedings before the BA. The board referred to T 1473/13, where another approach was developed, cf. Reasons 7.2.1 and 7.2.2, and to T 1870/16, Reasons 1.5.
The board considered that a strict application of the approach taken in T 166/84 would in effect deny a board to exercise discretion when deciding whether or not to stay the proceedings.
The discretion is however the inevitable consequence of the fact that there is no legal basis for requiring a board who has not referred the relevant questions to the Enlarged Board of Appeal to stay the proceedings.
Even if the strict approach of T 166/84 is applied to the case in hand, the board reached the conclusion that the proceedings should not be stayed.
The proprietors defined the claimed process and product in broad terms.
A similar description in broad terms is to be found in the description, cf. paragraph [0005], before turning to more specific embodiments and preferred features as in paragraph [0014] of the patent. Therefore, the board considered that:
- whether the claims are read in isolation or in light of the description, the meaning of the terms “coating” and “coated” used in the claims remains the same, and
- paragraph [0014] does not provide a definition of the terms “coating” or “coated”.
It followed that the outcome of the present case does not depend on the outcome of the referral, i.e. the answers to questions 1 to 3 in the referral G 1/24.
The board’s decision on the objection under R 106
The board noted that the proprietors have based their objection under R 106 on the fact that they do not agree with the decision of the board not to stay the proceedings. This, however, is not an issue of the right to be heard.
The board considered that the decision to reject the request to stay the proceedings does not suffer from any procedural deficiency because:
(a) there is no legal basis requiring a TBA to stay the proceedings due to a pending referral in a different case, i.e. such a decision to stay the proceedings remains a discretionary one, and
(b) the board observed that the proprietors requested to stay the proceedings in writing with the letter dated 30.10.2024 and during the OP on 18.12. 2024.
The proprietors had hence ample opportunities to present their comments on the issue of a stay of the proceedings, so that no violation of their right to be heard occurred.
Moreover, contrary to the proprietors’ opinion, the outcome of the referral G 1/24 is not decisive for the present decision, including on N of the MR.
Comments
The president of the EPO can order or not a stay of proceedings in first instance in case of a referral to the EBA. In the present case, the president has decided that proceedings before the EDs and ODs should continue, See OJ 07/2024, A67.
From the present decision one can conclude that any board, other than the referring board can discretionary decide whether to stay proceedings or not.
I fail to be convinced by this position and are inclined to consider that this question should be actually be made subject of a separate referral to the EBA.
Contrary to what the present board claims, Art 112(3) does not say that only the referring board should stay its procedure. It says that the decision of the EBA is binding on the board in respect of the appeal in question.
When following the logic of the present board, one could thus conclude that any other board is not bound by the decision of the EBA.
Considering that the TBA are not bound by decisions of the EBA is really far-fetched.
What the boards can do is to interpret a decision of the EBA. This has amply be the case following G 2/21. Besides enshrining the free evaluation of evidence, which did not need any confirmation, said decision has not helped to clarify the situation.
It is worth noting that, when looking at T 56/21, the deciding board had no hesitation in pre-empting G 1/24. There a stay would have been justified.
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