EP 2 970 875 B1 relates to cell culture compositions with antioxidants and methods for polypeptide production in which hypotaurine plays an important role.
Brief outline of the case
The patent was maintained according to a new MR filed before the OD.
One of the two opponents appealed.
The board decided maintenance according to a MR filed in appeal.
After a communication under Art 15(1) RPBA, the proprietor withdrew its MR and AR 1, 3-12 and 14-17. It submitted a new MR as well as AR 1 and 2.
The case is interesting in view of the admission of the MR in appeal.
The opponent’s point of view
No justification for admitting the MR had been provided by the proprietor. Identical added-matter objections had already been raised in the notice of opposition The same objections were reiterated in the statement of grounds of appeal.
The opponent argued, inter alia, that, irrespective of the timing of the filing of the MR, Art 13(1) RPBA, which applied in this case, required – due to the plural form of “issues” – that all outstanding objections raised by another party in the appeal proceedings be overcome.
It would not be enough if only one of several pending objections were overcome. The MR did not prima facie overcome the objections regarding sufficiency of disclosure under Art 83, which had already been raised in the notice of opposition, the statement of grounds of appeal and the board’s preliminary opinion under Art 15(1) RPBA.
The proprietor’s point of view
The deletion of dependent claims in certain requests did not result in a change in the factual or legal framework of the proceedings, and instead reduced the complexity of the proceedings by eliminating one of the matters in dispute.
This was merely a restriction of the scope of an appeal and as such did not constitute an amendment of a party’s case. It would be procedurally inefficient to file all possible permutations of claim requests addressing the different objections raised.
The MR combined amendments previously introduced in some AR and removed dependent claims 10 and 11 of the MR filed in opposition, corresponding to granted claims 14 and 15.
The MR addressed several of the opponent’s objections without giving rise to any new ones.
The board’s decision
The set of claims 1 to 8 in accordance with the MR was first filed as AR13 prior to the board’s communication under Art 15(1) RPBA.
The claims of the MR are identical to those of AR2 as filed during the opposition proceedings, except for the deletion of dependent claims 9 and 10. The deletion of claims 9 and 10 is self-explanatory and serves to overcome added-matter objections.
The board did not interpret Art 13(1) RPBA as requiring an amended claim set to overcome all objections raised by another party in the appeal proceedings. Requiring that all alleged objections be addressed as a precondition for admission would unduly restrict the proprietor’s means to defend its case, particularly in the case of a multitude of objections to different claims, the relevance or persuasiveness of which is disputed and thus open for consideration by the board.
The opponent’s interpretation would require a proprietor as a precaution to file permutations of claim sets which address all the objections raised by the opponents individually and in combination in order to anticipate an adverse decision on one or more or possibly all of these objections.
Otherwise a patent proprietor would have to overcome all objections irrespective of their merit in order not to lose the patent. A large number of requests would certainly not be in the interests of procedural expediency, but rather burden all parties and the board. Consequently, an amendment cannot necessarily be deemed inadmissible merely because it does not address all objections raised by an opponent.
In exercising its discretion under Art 13(1) RPBA, the board must assess whether the amendment prima facie at least resolves issues in a manner that promotes procedural economy, without giving rise to new objections. This assessment necessarily depends on the specific circumstances of the case.
The amendments to claim 1 do not introduce new matter: corresponding amendments to independent claim 1 had already been filed during the opposition proceedings. The request does not give rise to issues which have not been considered so far. No new discussions were to be expected.
Consequently, the board exercised its discretion under Art 13(1) RPBA and admitted the MR into the proceedings.
Comments
Deletion of claims
There is no uniform procedural case law of the boards when it comes to deletion of claims.
There are four lines of case law in this matter.
In a first line of case law, boards held that, the deletion of method claims, product claims, dependent claims or alternatives in a request is not to be regarded as an “amendment to the party’s appeal case”, if the deletion does not change the legal and factual framework of the procedure
In a second line of case law, boards held that, the deletion of such claims or alternatives has to be regarded as an “amendment to the party’s appeal case“,
In a third line of case law, boards held that, that although deleting claims represents an amendment of a party’s case but accepted that such an amendment is not prejudicial to the process economy.
In a fourth line of case law, boards held that due to the mere fact that such requests were considered as an amendment to a party‘s case, they were not admitted even if they could be considered as not detrimental to procedural economy.
Interpreting Art 13(1) RPBA
The opponent had a point when mentioning that in order to be admitted any request filed at the second level of convergence, any such amendment, prima facie, overcomes the issues raised by another party in the appeal proceedings or by the board and does not give rise to new objections.
There is thus no real discretion left to a board to admit at the second level of convergence if this request does not prima facie, overcomes the issues raised by another party in the appeal.
In the present case, claim 1 as granted was extremely broad and covered many possibilities. It should thus not come as a surprise, that numerous objections were raised by the opponent.
As the MR in appeal was filed as AR2 in opposition, why did the proprietor wait so late to re-file AR2 and delete the granted claims 14 and 15.
The proprietor was thus quite lucky to find a board so lenient as the present one.
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