The patent relates to humanized antibodies that recognize human IL-23p19 and modulate its activity, particularly in inflammatory, autoimmune and proliferative disorders.
The case is interesting as it deals with the exercise of discretion by the OD when not- admitting late filed submissions of the opponent.
Brief outline of the procedure
The patent was revoked for lack of sufficiency by the OD.
The proprietor appealed the decision.
The board confirmed the lack of sufficiency.
The board also held that the OD did not correctly exercise its discretion in not admitting late-filed documents of the opponent but admitting documents of the proprietor.
On the last day of the time limit under R 116(1), the proprietor filed a declaration D80.
The late filed submissions of the opponent
Late-filed documents D59 to D62 and D81 to D90 of the opponent were not admitted into the opposition proceedings.
D59 to D62
D59 to D62 were filed by the final date for making written submissions under R 116 in response to arguments raised by the proprietor or the OD. As they came from the opponent, they were manifestly filed after the 9 months period for filing an opposition and thus prima facie late. This does however not necessarily mean that the documents cannot be admitted in the procedure.
D59 to D62 were cited as technical evidence for various aspects of the disclosure.
D81 to D90
D81 to D90 were filed in direct and immediate response to new evidence, D80, submitted by the proprietor on the last day of making written submissions under R 116(1). They were filed 10 days before the OP.
The OD’s position
Opponent’s documents D59 to D62
The OD stated that in view of the its preliminary opinion, being in favour of the opponents, and in view of the fact that said documents were not prima facie more relevant than the documents already submitted by the opponents with their notices of opposition it decided not to admit them into the opposition proceedings in the exercise of its discretion under Art 114(2).
Opponent’s documents D81 to D90
D81-D90 were filed as a reply to the declaration D80 of the proprietor. The OD held that the content of D81 to D90 is reflected in the representative’s arguments in the accompanying] letter and that D82 to D90 were published years after the priority date of the present application and are prima facie not suitable to establish the general knowledge and the skills of the skilled person required at the date of filing which is discussed in the declaration. Therefore, the OD decided not to admit documents D81 to D90 into the opposition proceedings in the exercise of its discretion under Art 114(2).
Proprietor’s documents D64 to D 80
The OD considered that the proprietor’s documents D64 to D80 had been filed in “reaction to the negative preliminary opinion of the OD” and further, that the declaration D80 “can be seen as a reply to the declaration D21, filed by O1 (it later withdrew its opposition) with the notice of opposition”, and also that the D64 to D79 cited in D80 were published at the latest in the priority year“, The OD admitted D64 to D80 into the opposition proceedings in the exercise of its discretion under Art 114(2).
The board’s position
It is established case law that a board only overrules the way in which the OD exercised its discretion if it concludes that the OD did so according to the wrong principles or without taking into account the right principles, or that it exercised its discretion in an unreasonable way and thus exceeded the proper limit of its discretion.
The board considered that the OD decided according to the wrong principles and disregarded the principles of procedural fairness and of equal treatment of the parties in not admitting documents D59 to D62 and D81 to D90.
D59 to D62
Firstly, the mere fact that the OD’s preliminary opinion was positive for one party cannot in itself justify not admitting any further documents by this party which are filed by the final date set by the OD for making written submission under R 116(1).
Furthermore, prima facie relevance is to be assessed with taking into account the outcome of the proceedings and the OD gave no reasons why this criterion was not fulfilled for documents D59 to D62. Accordingly, the board could not assess whether the OD has exercised its discretion in this respect correctly.
D81 to D90
Secondly, arguments submitted by a party’s professional representative do not qualify as means of giving evidence under Art 117(1) and may therefore have a different weight depending on whether or not they are supported by evidence in the form of a declaration by a technical expert accompanied by evidentiary documents supporting the content of the declaration.
Accordingly, the OD was mistaken in holding that the declaration D81 with supporting documents on the one hand, and the representative’s arguments on the other were equivalent to its written submissions and that this could justify non-admittance of D81 to D90.
Thirdly, consideration of a document submitted in substantiation of an allegation of fact does not depend on whether or not the document forms part of the state of the art.
Therefore, the board did not agree with the OD that, as a matter of principle, post-published evidence is prima facie unsuitable for the substantiation of allegations of verifiable facts in the context of sufficiency of disclosure.
Fourthly, D81 to D90 had been filed as direct and immediate response to new evidence, D80, submitted by the proprietor on the last day for making written submissions under R 116(1).
In admitting the late filed documents D80 and its supporting documents D64 to D79 into the proceedings but not admitting documents D81 to D90 filed by the opponents in direct response, the OD did not respect the principles of procedural fairness and of equal treatment of parties.
A preliminary opinion can be revised
Finally, the fact that the OD’s preliminary opinion was negative for the proprietor but positive for the opponents cannot justify a different treatment of the parties, since a preliminary opinion is neither binding nor definitive.
Since the OD’s decision not to admit D59 to D62 and D81 to D90 into the opposition proceedings suffered from an error in the use of discretion, the board decided to admit D59 to D62 and D81 to D90 in the appeal proceedings according to Art 12(6) RPBA20.
The decision is interesting in various respects.
Firstly, in opposition, the OD has a duty of neutrality between the parties. An OD cannot give the impression that it favours one party.
Secondly, late filed documents cannot be dismissed because there were published after the filing/priority date. The OD could not know G 2/21, but the latter made clear that evidence cannot be dismissed for the simple reason that it is post-published.
Thirdly, the prima facie relevance of late filed documents, or its absence, has to be properly assessed.
Fourthly, the decision makes clear that the statement of a representative is by no means equivalent of statements under Art 117(1).
Finally, even if a preliminary opinion of the OD is positive for a party, it remains a preliminary opinion. It might change during the OP and cannot be the basis for the non-admissibility of late filed documents of the party for which the opinion is positive.
It is often heard that the preliminary opinion of an OD, or even of an ED, is more definitive than provisional. This impression should be avoided. If the opinion in the annex to the summons gives the feeling of being final rather than provisional, the usefulness of an OP can be questioned.
It is frequent that at the end of the annex to the summons, the OD invites the party which might be losing to overthink its request for OP. This kind of “arm twisting”, also practised by some boards, should be avoided.
In view of the production pressure on the OD, even in the framework of specialised opposition directorates, it is understandable that the OD tried to avoid long discussions over the admissibility of late filed documents of the opponent. This applies equally to late-filed requests of the proprietor. It does however not dispense the OD of being neutral.
Other OD’s were not as lucky as the present one. As the OD did not keep the balance between the parties, the board could easily have considered that the OD committed a substantial procedural violation, set the decision aside and remitted for further prosecution.
As the board came to the same conclusion as far as sufficiency is concerned, a remittal would, in the present case, not have been very useful. This might explain why the board did not conclude that the OD committed a substantial procedural violation.
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