EP 1 874 821 B1 relates to a combination of antibodies and glucocorticoids for treating cancer.
Brief outline of the case
The patent was maintained by the OD on the basis of a MR filed in opposition, more limited as the granted claims.
The OD held that D35a, a PhD thesis of 2005 was “potentially novelty destroying”, but not PA under Art 54(2), as its public availability was not proven. D35a was late filed, but admitted by the OD.
The proprietor as well as both opponents appealed the decision.
The proprietor and the opponents disputed, inter alia, the admissibility of the oppositions and of the proprietor’s appeal, as well as the public availability of the PhD thesis before the filing date and its status as prior art. Those points will not be discussed here.
Two OP were held.
At the end of the first OP, the board decided that AR1 in appeal=as maintained, lacked N over said PhD thesis.
As the examination of the other requests could not be completed during said first OP, it was therefore decided to resume written proceedings.
In the meantime, one legal member present in the first OP was replaced by another legal member.
At the beginning of the second OP, the proprietor requested, pursuant to Art 8 (1) RPBA, a new OP on the subject-matter of the interlocutory decision taken at the end of the first OP before the board in its new composition.
This request was refused by the board in its new composition.
At the end of the second OP, the board, in its new composition, came to the conclusion that, since none of the then valid requests were allowable, the patent had to be revoked.
The topic at stake here, is the res judicata effect resulting from a change of composition of the board between the two OP.
An objection under R 106 raised by the proprietor was dismissed by the board.
The proprietor’s point of view
Pursuant to Art 8 (1) RPBA, the proprietor requested, before the board in its amended composition. a new OP on the subject matter of the interlocutory decision resulting from the first OP.
The proprietor, referring to decision T 167/93, OJ EPO 1997, 229, Reasons 2.5(d), took the view that the principle of binding effect or res judicata presupposed identical facts and was therefore limited to the findings in the interlocutory decision taken during the first OP.
The proprietor argued that the board was misapplying the principle of res judicata if, in assessing AR 2, it considered itself bound by the findings of the interlocutory decision.
The board’s decision refusing the request of a de novo OP
The board noted that according to Art 8(2) RPBA, each new member shall be bound to the same extent as the other members by an interlocutory decision which has already been taken.
Art 8(2) RPBA therefore applies if an appeal has been decided in part but no decision finalising the appeal proceedings as a whole has yet been taken, irrespective of whether the interlocutory decisions were taken in OP or in written proceedings.
It is therefore clear from the systematic context within Art 8 RPBA that, according to its § 2, a new OP before a board due to a change in its composition after a first OP is only possible and necessary for submissions that have not yet been decided.
Insofar as a decision has already been made on the subject matter of an appeal during or after a first OP, the board, in its subsequently amended composition, is bound by the previously issued interlocutory decisions.
A board cannot amend or revoke it on its own initiative, and not only after a remittal to the department whose decision was contested by the appeal,. The board cited numerous decisions of the EBA and of the TBAs to support its point of view.
A decision of a board becomes formally final as soon as it has been issued, since there is no right of appeal against the decision and this also applies to interlocutory decisions.
With the formal res judicata, the content of the decision also becomes binding for the parties to the proceedings = substantive res judicata.
The fact that res judicata could be removed by a successful petition for review under Art 112a does not call into question the finality of a decision of a board, as long as no reopening of the proceedings pursuant to Art 112a(5) is ordered by the EBA.
There is then only the possibility of correcting obvious errors under R 140. Whether the appeal case was decided in full or only in part is irrelevant for the binding effect and res judicata.
Neither Art 116 nor R 115 et seq. provide for the immediacy and uniformity of OP before the EPO as understood by the proprietor. It is clear from the summary of Art 12, 13 and 15 RPBA that the written procedure is of great importance and that OP serve to conclude the procedure.
The board further noted, that unity of the opposition procedure means that several oppositions against the same patent are dealt with in a single procedure and are not subject to parallel or consecutive procedures.
The proprietor’s view on the primacy of Art 8 (1) RPBA is also not to be followed because Art 8 (2) RPBA would then have no reasonable scope of application. The binding nature of a substitute member to the interlocutory decisions made without his participation would be meaningless if such interlocutory decisions could be rendered invalid by a, partially unsuccessful, party to the proceedings with a request for a new OP.
Comments
Once the board has taken a decision on one of the contentious points in appeal, the board is bound by its decision, unless the board decides to reopen the procedure, cf. Art 15(5) RPBA.
The present decision makes clear that a change of composition of the board does not allow reopening of decisions announced during a first OP. This is quite logical and does no suffer any discussion in view of Art 8(2) RPBA.
The situation is thus somehow different in opposition.
Decisions announced during a first OP are binding for the OD in a second OP, when its composition is not changed. Therefore a request for a new OP on topics already discussed is to be refused, see Guidelines E-III, 3.
Should the composition of the OD (or the ED) have changed between the two OP, then the OD in its new composition has to ask the parties whether they accept the result of the first OP. If one of the parties does not agree, then the whole OP has to be started anew.
If an OD ignores the disapproval of a party, it commits a SPV. This is the same as when a decision is signed by a staff member not having participated to the OP, when one member is not available to sign the decision, see T 2020/20, commented in this blog.
It is however rather rare that an OD needs a plurality of OP to decide on a case. If the case requires it, the OP before the OD is scheduled on successive days. Then what has been decided in day 1 cannot be reopened in day 2, etc.
Comments
Leave a comment