CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 2716/19 – Obligations of an OD when assessing the admissibility of a late submission – Is G 2/21 applicable to a document kept by a proprietor for 18 years?

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The patent relates to prodrugs of phosphonate nucleotide analogues and methods for selecting and making same.

Brief outline of the case

The patent results from a divisional application of EP01961695 / EP 1 301 519.

The OD decided maintenance according to AR 6.

All three opponents appealed this decision.

As the patent had lapsed in all designated contracting states, opponents 1 and 3 withdrew their appeal, but opponent 2 requested continuation of the proceedings under R 84(1).

The board eventually confirmed the decision of the OD.  

The case is interesting as the board revised the discretionary decision of the OD not to take into account a post-published experimental report (D24) filed by the proprietor.

The opponent’s request

According to the opponent, the OD correctly concluded that D24 was late filed and assessed its prima facie relevance. Therefore, it used the right criterion for deciding on its admittance.

The opponent admitted that this assessment had been done by the OD only for the subject-matter of claim 1 of the then MR. However, it argued that this was correct. Otherwise, an OD would have to repeat this assessment for every auxiliary request on file.

The OD’s position

D24 was filed about two weeks in advance of the OP before the OD, whilst it was in possession of the proprietor for 18 years.   

The OD held that D24 was late filed, and the OD considered D24 not prima facie relevant and did not admit it in the procedure before dealing with the requests on file.   

In its decision, the OD did not deal with the question whether D24 was prima facie relevant for any of the requests before it, including AR 6 that it found allowable.

The board’s decision

For the sake of argument, the board considered that the OD correctly concluded that D24 could have been filed with the reply to the oppositions and thus that it was late filed.

Under this assumption, the OD correctly assessed whether D24 was prima facie relevant for maintaining the then MR when deciding on the admittance of this document.

However, for the board, the assessment of the prima facie relevance of D24 should not have been limited to the subject-matter of claim 1 of the then MR. It should have extended to the subject-matter of the AR on file, especially the subject-matter of claim 1 of the then AR 6 (now the MR).

For the board, extending the assessment of non-relevance avoids finding the potentially patentable subject-matter of an AR unallowable for the sole reason that a document, prima facie relevant to the subject-matter of the request, is not considered.

Therefore, the OD, when deciding on the admittance of D24, while using the correct criterion of prima facie relevance, did use it in an unreasonable way because it limited its assessment to the subject-matter of the then MR.

In view of G 7/93, OJ 1994, 775, the board set aside the decision by the OD not to admit D24.  

Since the proprietor referred to D24 in its reply to the grounds of appeal, i.e. at the earliest possible stage of the appeal proceedings, and based its inventive-step case on it, the board concludes that D24 should be part of the appeal proceedings pursuant to Art 12(1), (2) and (4) RPBA07, applicable in view of Art 25(2) RPBA20.

When dealing with AR 6, the board decided, in line with decision G 2/21, that a specific technical effect can thus be relied on by the proprietor, and post-published evidence confirming this technical effect cannot be disregarded.

A preliminary opinion that the subject-matter of claim 1 of the MR, former AR6, involved an IS had been communicated to the parties in the communication issued by the board under Art 15(1) RPBA20.

As the opponent did not file any reply contesting this board’s preliminary opinion, the appeal was dismissed.


Late submissions in general

Independently of the considerations set out in G 2/21, it is clear from the present decision that an OD cannot consider a late filed submission only admissible for a MR, but too late for all AR on file at the same time. This is not to be disputed.  

There is however a difference in the present case. When looking at the decision of the OD (Point 3.2 of the decision), the OD did not admit D24 for the all requests discussed during the OP.  It discussed the non-admissibilty with respect of the patent as granted.

It does not change the above conclusion, but this difference does not seem to have been spotted by the board.

Application of G 2/21

The experimental report was indeed late and was actually available to the proprietor for 18 years. The proprietor filed D24 allegedly in reply to objections based on D 21 which was also late filed but the admissibility of which was not disputed by the proprietor.

The question which arises is the following: is it reasonable to admit and use under G 2/21 a document which was in possession of the proprietor for 18 years before it brings it in the procedure?

Reasonable doubts are permitted, even if the applicability of G 2/21 can as such not be contested.

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