Brief outline of the case
The proprietor filed an appeal against the opposition division’s decision to revoke European patent 1 671 536 having the title “Double-type kalanchoe interspecific hybrids”.
The opposition division held that the ground for opposition in Art 100(a), pertaining to Art 53(b) and R 28(2), was prejudicial to maintaining the patent as granted, claim 1 of which was for a plant.
Claim 1 of an AR was held not to comply with the requirements of clarity pursuant to Art 84 and the claimed invention was held as not being disclosed in the patent in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art pursuant to Art 83.
The decision of the board
In view of the provisions made by the EBA for European patents granted before (and applications pending on) 1 July 2017, the new interpretation of Art 53(b) given in opinion G 3/19 of 14 May 2020, being a consequence of the introduction of new R 28(2) on 1 July 2017, has no retroactive negative effect on the patent, which was granted on 24 September 2015.
As the board understands, R 28(2) can therefore not be applied to exclude the claimed subject-matter from patentability in the present case.
Accordingly, the claimed subject-matter is not excluded from patentability under the new interpretation of Art 53(b) in conjunction with R 28(2).
Furthermore, the board considered that the provisions applicable before 1 July 2017, i.e. Art 53(b) EPC as interpreted by decisions G 2/12 and G 2/13 (OJ EPO, 2016, A27 and A28), do not exclude the claimed subject-matter from patentability either.
As the opposition division did not deal with any other requirement for patentability other than that pursuant to Art 53(b), there are special reasons to remit the case to the opposition division for further prosecution, in accordance with the appellant’s request pursuant Art 11 RPBA20.
There exists a series of decisions of the board following G 3/19 in which applications were refused for lack of compliance with R 28(2) which were set aside as filed prior to 01.07.2017.
The present decision appears to be the first decision in which R 28(2) has been applied in opposition following G 3/19.
The opposition procedure was stayed in view of the referral G 3/19.
The ground of opposition under R 28(2) was late filed but admitted by the OD and led to the revocation of the patent.
The whole thrust of the decision of the OD was to explain why in its opinion it had to take into account the result of G 3/19 in the present instance.
The wording of the second headnote and the last § of the opinion in G 3/19 is abundantly clear: “This negative effect does not apply to European patents granted before 1 July 2017 and European patent applications which were filed before that date and are still pending”.
It is therefore difficult to understand why the OD came to the conclusion in its decision dated 12.11.2018, that R 28(2) was applicable.
The mention of grant is dated 21.10.2015 in Bulletin 2015/43. Just compare the dates.