EP 3 400 908 B1 relates to artificial valve prostheses.
It results from a divisional application of EP 2 478 872 and EP 2 020 958.
Brief outline of the case
The patent was revoked by the OD.
The MR=as granted and AR 1-10 infringed Art 76(1).
AR 11 was lacking N over D7=US 2005/0137690. AR12 was not admitted by the OD.
The MR in appeal was AR12 and was not only admitted by the board, but the latter decided maintenance according to AR12.
The proprietor’s point of view
The proprietor argued that the MR had to be admitted, as it had been filed in response to an objection of added subject-matter raised during the OP.
Moreover, this request had de facto been admitted by the OD, since it had been extensively examined.
The board’s decision
The board noted that, in the impugned decision, the OD explained in detail why AR 12, the current MR, did not include added subject-matter and met the requirements of sufficiency of disclosure and clarity.
Moreover, it explained in detail why and where, in its opinion, the features that the “portion of the perimeter is positioned away from the vessel wall” and “the support elements are configured to accommodate limited radial movement of the commissural points with respect to the outer frame” were disclosed in D7.
Only after this detailed analysis did the Opposition Division concluded that the AR 12 was prima-facie not novel.
The board concluded that, de facto, the OD did not carry out a prima facie assessment but fully considered the current MR, which was therefore implicitly admitted.
The board agreed with the conclusion drawn in a similar situation in T 847/20, Reasons 4.1, that, by having implicitly admitted the current MR as a consequence of its extensive examination, the OD no longer had the discretion not to admit it.
Consequently, the OD wrongly exercised its discretion within the meaning of Art 12(6) RPBA.
The board also noted that it has all the elements it needs to review the substantive examination of the main request in a judicial manner, within the meaning of Article 12(2) RPBA.
Moreover, the MR formed a basis for the maintenance of the patent.
The MR was thus admitted into the appeal proceedings under Article 12(6) RPBA.
Comments
It can be agreed with the board, that the way of dealing of the OD with AR12 was not really coherent. After examining it substantially and in all detail, coming to the conclusion that it is not admissible is somewhat odd.
Following the logic of the present OD, an OD could indeed examine in substance all grounds of opposition and at the end of the OP decide that the opposition is not admissible. This would be plainly wrong.
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