The patent relates generally to agents and devices for promoting haemostasis and tissue sealing materials and, more particularly, to synthetic peptides having strong haemostatic properties and tissue sealing properties in combination with scaffolds, such as gelatine based haemostatic scaffolds.
Brief outline of the case
The patent was maintained according to AR 4 by the OD.
Proprietor and opponent appealed the decision. Both replied to each other’s appeal.
With the statement of grounds of appeal, the proprietor filed sets of claims of a MR (claims as granted) and of 17 AR, AR 17 being identical to AR 4 as maintained.
In a communication under Art 15(1) RPBA, the board expressed, inter alia, its opinion that claims 1 and 15 of the MR (claims as granted) failed to meet the requirements of Art 123(2), and that this also applied mutatis mutandis to the corresponding claims of AR 17.
In response to the communication of the board, the proprietor withdrew all of its previous requests and filed new AR 1 to 3. Former AR 17=AR4, as maintained by the OD, became the new MR.
The board confirmed its opinion that the new MR contravened Art 123(2).
AR1 and 3 were not admitted under Art 13(2) RPBA. AR2 was not overcoming the problem under Art 123(2) and was also not admitted under Art 13(2) RPBA.
The patent was revoked.
The interesting part relates to the admissibility of AR 1-3.
The proprietor’s position
The proprietor submitted that filing fall-back positions for every objection raised by the opponent would result in an enormous amount of AR, making the burden on the parties and the board much greater, and that this could not have been the intent of the RPBA.
The board’s position
The board agreed with the opponent that a set of claims of an AR submitted in response to the objection concerning the feature “scaffold for said peptide” not only could, but in fact should, have been filed with the proprietor’s reply to the appeal of the opponent.
The board noted, however, that the proprietor did not file any AR with its reply to the appeal of the opponent. The board thus had sympathy for the opponent’s argument that since no AR at all were filed, it had assumed that the proprietor would not be filing such AR at a later stage in the proceedings.
Accordingly, the board failed to see that there were exceptional circumstances, justified by cogent reasons, for the submission of such requests only after the parties had been summoned to OP and after the board had expressed its opinion that claim 1 of the MR contained added subject-matter. Moreover, in the view of the board, the admittance of such requests would not contribute to the procedural economy of the appeal case.
Furthermore, the board noted that the amendment to claim 1 of AR 1 and 3 is not limited to the mere deletion of claims or to the incorporation of subject-matter of a dependent claim, but rather concerns the introduction of a new feature disclosed in the description.
Accordingly, the amendment is open to objections under Art 84 and the opponent did in fact also formulate such an objection. The board considered this a further reason for holding that admitting auxiliary requests 1 and 3 into the appeal proceedings would not contribute to the procedural economy of the appeal case.
As regards AR 2, claim 1 of this request is identical to the same claim of the MR and therefore does not overcome the deficiencies under Art 123(2). The board has therefore decided, in application of Art 13(2) RPBA, not to admit AR 2 into the appeal proceedings either.
Already under the RPBA07, it was clear that a proprietor should not wait to hear the opinion of the board before filing ARs.
What is however interesting here is that, in case of objections raised by the opponent in its own appeal, the proprietor should file AR in reply to the opponent’s appeal and not wait for the board’s opinion. Were the opponent only be respondent, this should apply mutatis mutandis.
As the appeal procedure is not the continuation of the opposition procedures, cf. Art 12(2) RPBA, independently of Art 12(4) and 12(6) RPBA, filing numerous requests corresponding to various fall-back possibilities is not on. The corresponding argument of the proprietor is at best not convincing.
The board envisaged however that, should the amendment be limited to the mere deletion of claims or to the incorporation of subject-matter of a dependent claim, such late filed requests could well be admissible. This appears a very reasonable attitude from the side of the board. It would be good if more boards would show the same flexibility, even if strictly speaking such new requests represent an amendment to the proprietor’s appeal case.
Already in opposition, the late filing of an amended claim comprising features from the description, is in principle not admissible as it takes the opponent by surprise. There is a good lot of case law about this: T 1048/99, T 120/03, T 358/06, T 1763/07, T 1659/14 or T 2128/10. This is thus even the more so in appeal.
On the procedure
The patent should not have been granted in the form it was as claim 1 contravened Art 123(2). The patent should also not have been maintained in the form it was as the claim also contravened Art 123(2).
All in all, it took roughly 11 and a 1/2 years to come from filing to revocation.