EP 2 018 441 B1 relates to tagged microorganisms and methods for tagging microorganisms.
Brief outline of the case
A first decision of an OD to maintain the patent in amended form according to AR1 was set aside in a first appeal due to a substantial procedural violation to the disadvantage of Opponent 2, cf. T 1278/14.
The case was remitted to the opposition division for further prosecution on the basis of the then AR1.
In a second decision, the OD confirmed maintenance according to the original AR1.
During the second opposition proceedings, Opponent 1 withdrew their opposition. Opponent 2, as sole opponent, appealed the OD’s second decision.
The bord confirmed maintenance according to AR1.
Opponent’s 2 grounds of appeal after the second decision
With their statement of grounds of appeal (“SGA”), the opponent submitted arguments against the subject-matter of the main request under added subject-matter, lack of sufficiency of disclosure, priority, novelty and inventive step inter alia by referring in general to submissions made in their SGA of the previous appeal T 1278/14.
The opponent actually submitted the following general statement: “We also maintain all objections raised in our attached Grounds of Appeal in T1278/14, i.e. against the first decision of the OD. The facts and arguments presented in the Grounds of Appeal in T 1278/14 are incorporated herein in their entirety”.
The board’s decision
The sweeping reference to maintain in their entirety all objections, facts and arguments raised in the appellant’s previous SGA in case T 1278/14 in these appeal proceedings contravenes Art 12(3) RPBA which sets out that the SGA shall contain a party’s complete appeal case and should “specify expressly all the requests, facts, objections, arguments and evidence relied on”.
It is not for the board nor for the other party to construct the details of a party’s case.
The unspecified objections, facts and arguments of the appellant with reference to T 1278/14 are therefore disregarded in the present appeal.
Comments
The present decision makes clear that in case of remittal and new appeal, the grounds of appeal submitted in the first appeal proceedings cannot be merely recycled with a sweeping reference to those.
This is understandable, as the original decision as been set aside, and has thus never existed.
With the present day’s available copy and paste functions, it should not be difficult to take over the original grounds of appeal and to adapt them to the new decision.
The new objections of the opponent were not considered convincing. We will never know if the patent would have been maintained, should the original objections of the opponent would have been properly incorporated in the new SGA.
Incorporation by reference does, in principle, not work when it comes to prior art. It does also not work when it comes to a new SGA.
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