The present decision goes back to the 2d quarter of 2023. Its importance came to light when it was commented recently in “Le blog du droit européen des brevets”. .
The patent relates to a botulinum toxin assay with improved sensitivity.
Brief outline of the procedure
Claim 1 and 9 as granted were considered lacking sufficiency by the OD.
The OD decided maintenance according to AR VI.
Proprietor and opponent appealed this decision.
The proprietor requested rejection of the opposition as MR and maintenance according to AR I, II, III, IV and V and submitted claims of a new AR1A.
In its appeal, the opponent considered that AR VI underlying the decision under appeal did not comply with the requirements of Art 56 and 83.
During OP, the proprietor withdrew the MR and AR I, 1A, II, III and V, made AR IV, as filed with the statement of grounds of appeal, its MR, submitted a set of claims of a new AR I and made AR VI, considered allowable in the decision under appeal, its AR II.
For the board, the subject-matter of claim 14 of the MR lacked IS over D18=WO2024/060373, a document not mentioned in the ISR established by the EPO. The ISR simply mentioned 5 A documents.
Eventually the board confirmed maintenance of the patent as decided by the OD.
The case is interesting in that the appeal of the opponent was considered not admissible by the board.
The opponent’s position
The opponent requested that the decision under appeal be set aside, that the patent be revoked in its entirety and that the appeal fee be reimbursed because of a substantial procedural violation.
The board’s position
According to the decision under appeal, there were no objections from the opponent against the claims of AR VI.
According to the minutes of the OP before the OD, the opponent did not have any objections to AR VI.
Furthermore, the opponent has not submitted a request for correction of the minutes of the OP or submitted at any point that the minutes did not correctly reflect the relevant statements made during the oral proceedings.
In addition the opponent has not, in its statement of grounds of appeal or at any stage thereafter, taken issue with the fact that, in the decision under appeal, the OD had not given any reasons as to why AR VI complied with the requirements of the EPC.
For the board, it was apparent from the decision under appeal and the minutes of OP that revoking the patent in toto represented the opponent’s initial request made both in the notice of opposition and at the beginning of the OP.
The opponent’s subsequent statement that it had “no objections” to the then AR VI made in the course of the OP before the OD can therefore only be understood to mean that it agreed to the patent being maintained in amended form on the basis of AR VI, implying that the initial request for the patent to be revoked in toto had been withdrawn and that opponent’s final position was that the patent should be upheld neither as granted nor in any version broader in scope than AR VI.
The fact that the OD did not establish the final requests of the parties at the end of the OP has no bearing on this conclusion. As acknowledged by the opponent, the final requests are usually not established at the end of the OP before the OD, and the opponent was aware of this. It would therefore have been up to the opponent to state any objections it had against AR VI when it was given the opportunity to do so by the OD.
In the board’s view, the opponent cannot be considered to be adversely affected within the meaning of Art by the OD’s decision and the opponent’s appeal was therefore not admissible.
The trap for the applicant/proprietor
A division of first instance often asks, in presence of a multiplicity of requests whereby most of them being not allowable, the applicant/proprietor whether the allowable request is its sole request. If the answer is yes, the applicant/proprietor is trapped. By declaring that the allowable request is its sole request he has implicitly abandoned all higher-order requests.
This saves time for the division as the minutes simply mention that the last request was the only request of the applicant/proprietor. No reasoned decision has to be drafted for the requests which have been implicitly abandoned. An appeal on the abandoned is then not admissible or consist of an amendment of the proprietor’s case under Art 12(6) RPBA21, second sentence.
The trap for the opponent
Now the trap has opened for the opponent. According to the board, as soon as the opponent declares that he has no objections to a request considered allowable by the OD, he has abandoned its original request, which is in general revocation of the patent.
The lesson to be learned: stick to the original request for revocation, even at the end of the day and in presence of a request considered allowable by the board.
In the present case, the decision of the OD merely states that the opponent had no objections to AR VI, but, as noted by the board, fails to state as such any reason why AR VI meets the requirements of the EPC. In AR VI, claims 13 and 14 relating to a kit were deleted. It can only be inferred from the discussion of AR V that claim 13 was lacking IS. Beside noting the absence of a decision of the OD on AR VI, the board has not drawn any conclusions. One wonders why? It cannot be said that if an opponent has no objections against an AR that this AR necessarily meets the requirements of the EPC.
It will have to be seen whether the interpretation of the present board of the implicit abandonment of the original request for revocation is endorsed by other boards.
By considering the opponent’s appeal not admissible, and the prohibition of the reformatio in peius, the board saved itself the work of considering the objections raised by the opponent against AR VI under Art 83 and 56.
Request for correction of the minutes
It is a bit too easy for the board to state that the opponent should have required the correction of the minutes of the OP before the OD, as the OD can refuse to correct the minutes.
On the other hand, without requesting up front a correction of the minutes, it might be impossible for a party to correctly demonstrate that a substantial procedural violation has occurred.
On the procedure
Since the ISR and the opinion were positive, the patent was rapidly granted. At least claim 14 as granted should not have been granted in view of D18, which alas was not found in the ISR.