EP 3 402 440 B1 relates to a stent based device for treating an incompetent or regurgitant tricuspid (atrioventricular) valve.
Brief outline of the case
The OP maintained the patent according to AR3, as it considered, inter alia, a new MR (MRn) as lacking N over D3.
In the MRn, two dependent claims had been deleted in view of an objection under Art 83.
The board held that claim 1 of the MRn=claim 1 as granted did not lack N as D3 does not address the treatment of tricuspid insufficiency.
Request for postponement of the OP by the opponent
During the OP before the Board, the opponent stated that it had only become aware of the proprietor’s last letter, in which the proprietor had further discussed the issue of N of claim 1 in view of D3, and of AR 1a filed with that letter, during the ongoing OP.
The opponent therefore requested that the OP be postponed – i.e. more precisely, that they be adjourned – to give it sufficient time to consider the proprietor’s submissions and to prepare a reply.
This request was dismissed by the board, as well as an objection under R 106 following the refusal to postpone the OP.
The board’s decision on the non-postponement of the OP
An internal investigation by the registry following the OP has indeed revealed that, for some reason, the proprietor’s last letter was not forwarded to the opponent as would normally have been the case.
The board recognised that this was regrettable, but decided that this failure, however unfortunate, did not justify the adjournment of the OP.
The discussion at the OP did not turn on AR 1a filed with the said letter, but was limited to the patentability of the MRn.
It is true that said letter also comprised submissions on the N of the MRn in view of D3. However, the board’s conclusion that the subject-matter of claim 1 is novel in view of D3 was not taken on the basis of those submissions but rather on the basis of the arguments put forward by the proprietor at the OP, which supported the view that the implant disclosed in D3 is unsuitable for treating tricuspid insufficiency.
The opponent orally replied to these arguments. As can be seen from the minutes of the OP before the board, it was indeed only at the OP, after both parties had been heard by the board on this issue, that the board took the view that the subject-matter of claim 1 was novel over D3, thus departing from its preliminary opinion expressed in its communication under Art 15(1) RPBA and reiterated at the beginning of the oral proceedings, which was in favour of the opponent.
The issue of whether the implant of D3 is suitable for treating tricuspid insufficiency was of relevance throughout the opposition proceedings and was discussed in the decision under appeal itself.
At the OP, the proprietor merely emphasised and refined some of the arguments already put forward on this issue in its statement of grounds of. Therefore, the proprietor’s submissions at the OP before the board on this issue – which, moreover, were easily understandable – could not have surprised the opponent.
The fact that some of the arguments put forward by the proprietor at the OP before the board may already have been set out in said letter was irrelevant and did not prevent the opponent from commenting on and rebutting these arguments, something the opponent in fact did.
Comments
It is regrettable that the board only enquired at the registry after the OP, and did not interrupt the OP immediately, when it became aware that a letter from the proprietor had not been forwarded to the opponent.
In R 7/09 and R 4/17 the EBA held that there no need to consult the register in order to see whether there has been a submission by a party. This seems to have been ignored by the present board, which was manifestly determined to pursue the OP.
The boards are very prompt to refuse any reference to opposition proceedings from the parties, but this is what the present board actually did.
It is clear that matters can be discussed through during OP, but in view of the fact that the provisional opinion of the board was positive for the opponent, the break of two hours accorded to the opponent was not for getting knowledge of the last submission of the proprietor.
After the break, the board announced that the objection under R 106 was dismissed and that claim 1 of the MRn was novel over D3. Further objections relating to N or IS of claim 1 were discussed before the final announcement of the decision of the board.
The way the opponent was treated by the board can be qualified as grossly unfair.
Becoming aware that a letter of the proprietor had not been forwarded to the opponent would have warranted a break for the latter to gain knowledge of the proprietor’s last submission, and not to continue a discussion on D3 and only after deciding a break. The break was judiciously granted over lunch time.
ODs have been considered committing a SPV when not giving enough time to a party to gain knowledge of a late submission. See for instance T 408/08 or T 1036/01.
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