The patent relates to a drive assembly for a drug delivery device and a drug delivery device incorporating such a drive assembly, in other words an injection pen.
The present patent claims an “internal priority” of 11.06.2010, i.e. EP 10165640 which has manifestly been withdrawn.
Brief outline of the case
All three opponents raised grounds under Art 100(a to c).
The OD revoked the patent for lack of sufficiency, cf. Art 100(b).
The BA revoked the patent for added subject-matter, cf. Art 100(c). The board held that claim 1 as granted consisted of an “artificial combination of cherry-picked features”.
The proprietor requested remittal in case additional reasons, not yet addressed by the OD, were to be discussed in connection with claim 1.
The request for remittal was dismissed.
A request for a decision on Art 100(b) or at least a positive statement about sufficiency was also dismissed.
The reasons for non-remittal
The board did not grant the proprietor’s request for remittal to the first instance for all issues concerning Article 100(a) and (c) EPC which were not discussed before the OD, as no special reasons presented themselves for doing so.
The objections under Art 100(c) and 123(2) were in the appeal proceedings from the beginning and were raised by the opponents 2 and 3 with their replies to the statement of grounds of appeal.
The objection relevant to the present decision concerns the same features as the objection under Art 83, i.e. a purely linearly moving piston rod being a screw thread directly engaged with the first drive part.
Under these circumstances, the board exercised its discretion under Art 111(1), second sentence, to decide on the opponents’ 2 and 3 objections raised under Art 100(c).
It is the boards’ settled case law that parties do not have a fundamental right to have their case examined at two levels of jurisdiction. Accordingly, they have no absolute right to have each and every matter examined at two instances.
Art 111(1), second sentence, leaves it instead to the board’s discretion to decide on an appeal either by exercising any power conferred on the department of first instance or by remitting the case to that department (Case Law of the BoA of the EPO, 10th edition, V.A.9.2.1).
The board also dismissed the request of the patent proprietor to include additionally a decision about Art 100(b) or at least a positive statement in the decision to reflect the positive preliminary opinion of the board on this issue. For the board there is no legal basis for granting this request. On the contrary, R 102 implies that a decision should be reasoned in so far as the issues to be decided are concerned.
Contrary to the proprietor’s opinion the prohibition of reformatio in peius does not apply. The legal effect of the impugned decision was that the patent was revoked.
By confirming the decision of the first instance, even if on a different ground, the legal effect of the impugned decision remains the same, whereby the situation of the proprietor is the same as if they had not appealed.
The patent proprietor’s argument that in some national proceedings a revocation for lack of sufficiency before the EPO would be looked at differently than a revocation for added subject-matter is irrelevant because:
- the criteria for applying the prohibition of reformatio in peius relate to the situation of the appellant in the proceedings before the EPO,
- ii) a reference to such national proceedings is merely hypothetical, and
- iii) the present decision would in any case have no binding effect.
No right for two instances
The revocation by the board was not due to a new ground of opposition, Art 100(c) vs. Art 100(b) as the second ground was in the procedure from the beginning. Moreover it concerned the same features as those queried under Art 83 by the OD.
The board reminded rightly that no party, be it the opponent or the proprietor, has the right to two levels of decision. Remittal would not have helped anyway.
Prohibition of the reformatio in peius
The decision is interesting in that the board dismissed a request for a decision about Art 100(b) or at least a positive statement on sufficiency.
The granted EP has apparently be validated in AT BE CH CZ DE DK ES FR GR HU IE IT LI NL NO PL TR.
This might explain why the proprietor requested a positive decision on sufficiency or at least a positive statement in this matter. Since the patent was in any case revoked, this request was to no avail.
If the patent is revoked, it does not matter for whatever reason, it is dead as dead can be. This reminds me of the famous parrot scene in Monthy Pythons….
The prohibition of the reformatio in peius did certainly not apply, as the result was the same before and after the appeal.
Whilst T 1437/15 refers to G 9/91 (power to examine the opposition by an OD or by a BA), there is no reference in G 9/91 to the prohibition of the reformatio in peius.
The prohibition of the reformatio in peius has been dealt with in G 1/92 and G 1/99. T 1437/15 is cited in T 1475/18, but any reference to the prohibition of the reformation in peius is also absent in the latter. The reasons for quoting those decisions remain cryptic.