The patent relates to compositions comprising paraffins produced from biological raw materials as well as materials and a method for producing the same.
Brief outline of the case
The opposition was rejected and the opponent appealed.
The OD had decided that D4=Kanokporn Sinthavarayan, “Fractionation and Characterization of Renewable Paraffinic Solvents”, master’s thesis, Aalto University, School of Chemical Technology, approved on 20.08.2013, was not public.
The board decided to the contrary that D4 was public according to the Finnish law. It refused to refer corresponding questions raised by the proprietor to the EBA.
The board held that claim 1 of the MR (as granted) was lacking IS over D4.
The board raised the question of the admissibility of AR 1-16 filed in opposition under Art 12(4) RPBA.
The board decided to admit all AR1-16 in the procedure and not to remit to the OD.
The board held that none of the AR was allowable, and hence, the patent was revoked.
The case is interesting in view of the
- public availability of D4
- board’s decision on the admissibility of AR 1-16.
Public availability of D4
Whilst it is common knowledge that PhD dissertations are public, it is much less common that Master’s theses are public.
Finnish law provides that a university thesis falls within the public domain immediately after approval and is immediately available to the public by means of at least one hard copy being available at the department where the thesis was prepared. Master’s dissertations are thus public in Finland.
The proprietor could not prove that D4 was kept secret or that its publication was delayed. The board refused to refer corresponding questions to the EBA.
Admissibility of AR 1-16 – The opponent’s point of view
AR 1 to 16 had been filed only two months prior to OP before the OD.
These requests contained at least seven diverging lines of amendment.
No reasons justifying the filing of these AR at a late stage during opposition proceedings were apparent, especially in view of the OD’s preliminary opinion being in favour of the proprietor.
Procedural economy would be negatively impacted by a remittal of the case to the OD.
Two months was not enough time for the opponent to prepare a proper response to these auxiliary requests.
It had to be concluded that AR 1 to 16 had not been admissibly raised before the OD.
In view of Art 12(4) RPBA20, these requests should not be admitted.
No special reasons justifying a remittal were present since IS was the only ground for opposition. Moreover, D4 had been used as the CPA for the subject-matter of the claims as granted, and this remained the case for the subject-matter of all AR.
Admissibility of AR 1-16 – The proprietor’s point of view
The OD decided to reject the opposition and thus did not decide on the admittance of AR 1 to 16. The proprietor argued that since these AR were filed before the OD and no decision on their admittance had been taken, the requests were per se part of the appeal proceedings.
Admissibility of AR 1-16 – The board’s point of view
Under Art 12(2) RPBA20, a party’s appeal case shall be directed, inter alia, to the requests on which the decision under appeal was based. Since the OD did not decide on the admittance of AR 1 to 16, the appealed decision is not based on these requests. Thus, the reliance of the proprietor on AR 1 to 16 in the appeal proceedings does not meet the requirements of Art 12(2) RPBA20.
The admissibility of AR 1-16 had thus to be decided under Art 12(4) RPBA.
To judge whether a claim request was admissibly raised in opposition proceedings within the meaning of Art 12(4) RPBA20, a board has to decide whether the OD should have admitted the requests, had a decision on admittance been required. If so, the claim request was admissibly raised.
As a rule, claim requests filed in reply to the notice of opposition within the time limit set under R 79(1) should have been admitted by the OD and were thus admissibly raised.
The board held that AR filed within the time limit under R 79(1) EPC might also be, in truly exceptional situations, considered not to have been admissibly raised within the meaning of Art 12(4) RPBA20. The board is aware that in this respect it diverges from what is stated in the Guidelines in E-VI 2.1.
The board justified this by quoting R 6/19 and Art 81(3). The Enlarged Board derived this discretion especially from the rule’s provision that an opportunity to amend the patent must be given only “where necessary”.
The current board observes that in a similar way, R 79(1) stipulates that a patent proprietor must be given the opportunity to amend its patent in reply to the notice of opposition only “where appropriate”. Therefore, discretion is available to the OD also not to admit claim requests filed within the time limit set under R 79(1). Hence, these claim requests may, in truly exceptional situations, also be regarded as not having been admissibly raised.
The board also referred to T 221/20, and considered that the Guidelines E-VI, 2.2.2 should not state that “Amendments submitted before the date set under R 116(1) cannot, as a rule, be considered as being late-filed”. If those requests are duly substantiated, there is no reson not to admit them.
The criteria generally used by the boards of appeal when exercising their discretion to admit or not a party’s submission in appeal under the Rules of Procedure 2020 may also be considered when deciding whether or not a late-filed claim request submitted after the expiry of the time limit set under R 79(1) and before the expiry of the time limit set under R 116(1) should have been admitted by the OD and was thus admissibly raised. However, when taking this decision, in view of the administrative character of opposition proceedings, these criteria should be used by the boards in a more lenient way than for a party’s submission filed during appeal proceedings.
In fact, to properly defend its patent, a patent proprietor must in principle be permitted to redefine its fall-back positions in terms of AR also at a late stage of opposition proceedings.
Public availability of Master’s theses in Finland
The present decision offers an interesting field of search for prior art for opponents as in Finland university theses, be it for a PhD or for a MSc are public.
Admissibility of AR 1-16
That AR requests filed with the reply to the notice of opposition within the time limit set under R 79(1) EPC are not late filed is a self-evident truth. The only exceptional reason which can be seen for refusing to admit such requests would be the absence of substantiation of those requests or if those would contravene R 80.
To decide that in view of the fact that since AR 1-16 were not discussed by the OD, which had actually decided to reject the opposition as in its view the MR was allowable, AR 1-16 represented an amendment to the proprietor’s appeal case, defies all understanding.
After all, the OD had considered the MR allowable and had thus no reason to decide on the admissibility of the AR.
It is possible to consider that the board, by deciding in this way, actually punished the proprietor in view of the decision of the OD. In view of the circumstances, the proprietor could not help the absence of decision on the admittance of AR 1-16.
The reality in first instance is quite different
To decide that any request filed after the reply to the grounds of opposition but before the time limit under R 116(1) has to be submitted to an admissibility examination by the OD, appears out of touch with reality. The only reason for not admitting those requests should again be the absence of any substantiation or if they contravened R 80.
If the proprietor files, in the opinion of the opponent, too many requests before the date set under R 116(1) and the opponent is of the opinion that there is not enough time to deal with them before the OP, he always has the possibility to request postponement of the OP before the OD. This was actually a possibility suggested by the board in its decision to the present opponent.
To only admit such requests when those requests are submitted in direct and timely response to a change to the subject of the proceedings introduced by the opponent or the OD appears also out of touch with reality. There is no rule in opposition corresponding to R 137(3) in examination.
If the legislator wanted to further limit the possibility of amendment by the proprietor in opposition, he should have enacted a corresponding rule to R 137(3) in opposition. Actually, the only formal limit to amendments in opposition is R 80.
If such requests are duly substantiated and do not contravene R 80, there is no reason for an OD not to admit them. That those requests might be divergent is also due to the very strict application of the levels of convergence by the boards. The proprietor should be allowed to defend its patent in the way it sees fit.
Any requests filed after the time limit under R 116(1) are prima facie late filed and should indeed be submitted to an examination as to their admissibility.
Requests filed before an OD within the time limit under R 116(1) cannot be considered as a being filed at a late stage of opposition proceedings. On the contrary they are filed at the heart of the opposition proceedings, before a decision is taken during OP by the OD. Provided those AR are in accordance with R 80 and are properly substantiated, they should be admitted.
Not really logical
The board actually contradicts itself when on the one hand requests filed after the reply to the grounds of opposition but within the time limit under R 116(1) should be submitted to an admissibility examination by the OD, but on the other hand, the board holds that in order to properly defend its patent, a proprietor must in principle be permitted to redefine its fall-back positions in terms of AR also at a late stage of opposition proceedings.
Any request filed after the time limit under R 116(1) is prima facie late filed and should indeed only be admitted in exceptional circumstances, for instance if a late filed document by the opponent is admitted in the procedure by the OD.
After having decided that the AR 1-16 were to be admitted in the procedure, the board went through them and decided that they were not allowable for lack of IS over D4.
As those AR were not subject to any decision of the OD, as the latter had rejected the opposition, it is difficult to see that in this respect, the board correctly applied Art 12(2) RPBA according to which it should only review in a judicial manner decisions of the OD. In the absence of a decision of the OD, there is nothing to be reviewed in a judicial manner.
Out of fairness for the proprietor, the board should have remitted to the OD for further prosecution. That a further appeal would be filed by one of the parties is highly likely. Getting read of the patent at the first go avoids a new appeal and is thus good for the production/productivity of the boards….
The patent had still a while to go and remitting the case to the OD would not have unduly delayed the proceedings. Other boards have remitted in such a situation and, in my humble opinion, therewith acted in a more satisfactory manner.
A word of warning
The present decision can be taken as a warning for proprietors.
They should file as many requests as possible when replying to the grounds of opposition.
This will not make life of ODs easier, but this a direct consequence of the RPBA and decisions as the present one. That the RPBA valid since 2020 would be increasing the workload of departments of first instance was foreseen by many users. Whether it improves the efficiency of the EPO as a whole remains to be seen.