Sunday, 15 May 2016

T 985/11 Absence of proprietor leading to revocation?



The decision relates to an opposition appeal. The proprietor was absent during the oral proceedings. The Board was willing to allow auxiliary request 3. The appellant requested the patent to be revoked since the description was not adapted to this request and could not be adapted during the oral proceedings because the proprietor had chosen to be absent. The appellant was of the opinion that it was established case law to revoke the patent in such a situation. The Board had to review the case law and came to the conclusion it had a discretion in such matters.


Summary of Facts and Submissions

I. The appeal by the opponent (hereinafter "appellant") lies against the interlocutory decision of the opposition division that European patent No. 1 401 259 could be maintained in amended form.

II. The patent at issue has the title "Delta-4 desaturase genes and uses thereof". It was granted in respect of European patent application No. 02731579.5, which originated from international patent application No. PCT/US2002/013589, published as WO 2002/090493, and which claims priority of US849199, filed on 4 May 2001, and of US120637, filed on 11 April 2002.

III. Documents cited in this decision: […]

IV. The patent was opposed under Article 100(a) EPC on the grounds of lack of novelty (Article 54(3) EPC) and lack of inventive step (Article 56 EPC). The opposition division decided that the patent could be maintained in amended form on the basis of auxiliary request 3.

V. The appellant filed its statement of grounds of appeal containing arguments under Article 56 EPC against auxiliary request 3.

VI. In response to the statement of grounds of appeal the proprietor (hereinafter "respondent") made auxiliary request 3 its main request and filed auxiliary requests 1 to 6.

Claim 1 of the main request reads: […]

Claim 1 of auxiliary request 2 reads: […]

Claim 1 of auxiliary request 3 reads: […]

VII. At the oral proceedings before the board on 9 September 2015 the respondent was absent, as announced in its letter of 5 August 2015. They were thus held in accordance with Rule 115(2) EPC and Article 15(3) and (6) RPBA. In the course of the oral proceedings the appellant raised an objection under Article 84 EPC and requested the referral of the following question to the Enlarged Board of Appeal under Article 112(1) EPC:

"Can Art. 111(1) EPC in connection with Art. 15(3) and (6) RPBA be interpreted such that a case may be remitted to the department of the first instance to adapt the description to an allowable set of claims, if a duly summoned patent proprietor is absent at the oral proceedings and if the opponent has raised an objection under Art. 84 EPC due to the lack of an adapted description."

At the end of the oral proceedings the chairwoman announced the board's decision.

VIII. The arguments of the appellant submitted in writing and during the oral proceedings may be summarised as follows:


Main request

Article 56 EPC […]

Article 84 EPC

The description referred to SEQ ID NO: 36 and SEQ ID NO: 37 and thus was not adapted to the claimed subject-matter, contrary to the requirements of Article 84, second sentence, EPC. Since the respondent was absent, the description could not be adapted at the oral proceedings. Accordingly, the patent had to be revoked.

Decision in respect of appeals (Article 111(1) EPC)

The case should not be remitted to the opposition division for adaptation of the description for reasons of procedural economy and legal certainty, see Article 15(3) and (6) RPBA and decisions T 109/02, T 181/02, T 651/08, T 776/05 and T 2294/08. The non-attendance of the respondent should not be allowed to delay the proceedings.

Referral

If the board intended to deviate from decisions T 109/02, T 181/02, T 651/08, T 776/05 and T 2294/08, it would have to refer to the Enlarged Board of Appeal the question filed during oral proceedings, in order to ensure uniform application of the law.

IX. The arguments of the respondent submitted in writing may be summarised as follows:

[…]


Reasons for the Decision1. The duly summoned respondent did not attend the oral proceedings, as announced in its letter of 5 August 2015. In accordance with Rule 115(2) EPC and Article 15(3) and (6) RPBA, the oral proceedings therefore took place in its absence.
2. The patent under consideration relates to nucleic acid molecules that encode delta-4 (Delta4)-desaturases from the fungus Thraustochytrium aureum (T. aureum), the fungus Schizochytrium aggregatum (S. aggregatum) and the algae Isochrysis galbana (I. galbana). Desaturases are involved in the production of long-chain polyunsaturated fatty acids (LCPUFAs). Delta4-desaturases catalyse the conversion of, for example, adrenic acid (22:4n-6) to omega6-docosapentaenoic acid (DPA, 22:5n-6) and of omega3-docosapentaenoic acid (22:5n-3) to docosahexaenoic acid (DHA, 22:6n-3).

Main request
Inventive step (Article 56 EPC) […]

20. In summary, the board concludes from the above that the skilled person would not have arrived in an obvious manner at the subject-matter of claim 1 of auxiliary request 3 , insofar as it relates to the Delta4-desaturase of I. galbana. The considerations in respect of claim 1 of auxiliary request 3 apply also to the subject-matter of independent claims 6, 7, 8, 9, 10, 11, 13, 14 and 18 and of dependent claims 2 to 5, 12, 15 to 17 and 19 to 23. Therefore auxiliary request 3 fulfils the requirements of Article 56 EPC.

Adaptation of the description (Article 84, second sentence, EPC) / Remittal (Article 111(1) EPC)

21. At the oral proceedings, the appellant submitted in relation to auxiliary request 3 that the respondent had failed to provide a description that was adapted to the claims of this request. Therefore, auxiliary request 3 contravened the requirements of Article 84, second sentence, EPC. Since the description could not be adapted at the oral proceedings because the respondent was absent, the patent had to be revoked.

22. The board notes that the claims of auxiliary request 3 held allowable by the board no longer encompass subject-matter relating to the Delta4-desaturase of S. aggregatum. Accordingly, the description as adapted before the opposition division relates to subject-matter which is no longer claimed and therefore needs to be further adapted.

2.3 The board does not share the appellant's view that the board must revoke the patent for this reason because of the respondent's inability, due to its absence, to provide an adapted description at the oral proceedings. Instead, the board takes the view, for the reasons set out below, that under Article 111(1), second sentence, EPC it still has discretion to decide how to proceed in this situation, and in particular whether to (1) remit the case to the opposition division for adaptation of the description or (2) exercise the powers of the opposition division and either (2a) continue the proceedings in writing or (2b) revoke the patent.

24. Rule 115(2) EPC and Article 15(3) RPBA address the situation that a duly summoned party is absent from the oral proceedings. Rule 115(2) EPC provides that the proceedings may continue without that party, and Article 15(3) RPBA confirms that the board is not obliged to delay any step in the proceedings, including its decision, by reason only of the absence of such party who may then be treated as relying only on its written case.

25. These provisions indicate that, by absenting itself from the oral proceedings, a duly summoned party cannot expect that the appeal proceedings will necessarily be conducted differently from if the party had been present, and in particular that they will be continued. The provisions do not however restrict the board's discretion when deciding which of the available options to pursue.

26. In the case of an allowable appeal, whether and to which extent a board deals itself with any issues arising, i.e. exercises the powers of the department whose decision was appealed, or remits the case to that department for further prosecution, is decided by the board on the merits of the case in point. When taking such decisions, the boards consider various aspects, such as the parties' requests, procedural economy, the parties' interest in having the matter examined by two instances, and the right to fair proceedings (see Case Law of the Boards of Appeal, 7th edition 2013, IV.E.7).

27. Considering the available options mentioned in point 23 above, the board decided against continuing the appeal proceedings in writing, for reasons of procedural economy. Furthermore, Article 15(6) RPBA requires boards to ensure that cases are ready for decision at the conclusion of the oral proceedings unless there are special circumstances to the contrary. In the present case, the board could not identify any special circumstances preventing it from taking a decision terminating the appeal proceedings.

28. In support of its request for non-remittal, the appellant argued that the avoidance of further delays, procedural economy, its interest in obtaining a final decision and its need for legal certainty required immediate revocation of the patent.

29. The board is not persuaded by these arguments. From the file history it is apparent that the appellant did not take any steps prior to the oral proceedings to accelerate the opposition or appeal proceedings. The additional delay caused by a remittal seems likely to be fairly short, since the wording of the claims is finalised by the present decision, and the proceedings after remittal will thus be confined to adapting the description. As the board is taking a decision on the allowable version of the claims, procedural economy and legal certainty are also served.

30. As the claims of auxiliary request 3 were found allowable, the board regarded revocation of the patent as inappropriate in the present case. Moreover, it considers that it is required to act in a predictable manner, to ensure fair proceedings for the parties. It has therefore looked at how it has dealt with cases similar to the present one, in which adaptation of the description needs thorough examination because of the extent to which the claims have been amended during the appeal proceedings. It found that in fact it more often than not remitted such cases for adaptation of the description - even if the patentee was present at the oral proceedings and could have filed an adapted description.

31. In support of its case, the appellant further relied on the following five decisions: T 109/02, T 181/02, T 776/05, T 651/08 and T 2294/08. What all these cases have in common is that the appellant-patentee was absent from the oral proceedings, no description adapted to the amended claim requests was on file, and the patent was ultimately revoked.

32. In all five decisions, the board concerned emphasised that a patent proprietor who prior to oral proceedings files amended claims but no description adapted thereto, and who is not represented at the oral proceedings, cannot "rely on" the proceedings being continued in writing or the case being remitted to the department of first instance for adaptation of the description (see T 181/02, point 4 of the reasons; T 109/02, point 4.2 of the reasons, T 651/08, point 3 of the reasons, T 776/05, point 3.3 of the reasons, and T 2294/08, point 3 of the reasons).

33. The board agrees: a patentee who acts in that way cannot be sure of getting a possibility to adapt the description to the amended claims, and - as shown by the decisions cited by the appellant - does indeed run the risk of losing its patent due to a non-adapted description.

34. However, the board notes that the outcome in T 181/02 and T 776/05 could only have been revocation of the patent, because the deciding board came to the conclusion that, irrespective of the absence of an adapted description, the claims as amended did not meet the requirements of the EPC (see T 181/02, point 3.4 of the reasons and T 776/05, points 2.10 and 3.1 of the reasons), whilst in the three other decisions the board did not elaborate on its reasons for opting for revocation. Be that as it may, this board cannot identify anything in any of the five decisions relied on by the appellant to suggest that the deciding board took the view that it was obliged to revoke the patent for lack of an adapted description, or in other words could not have ordered remittal for adaptation of the description had the circumstances of the case so required. That these boards too - like the present one - regarded themselves as having discretion to remit the case is in fact shown by the statements in their decisions that a patent proprietor cannot "rely on" a postponement of the board's final decision or on a remittal of the case for adaptation of the description.

35. For the reasons set out above (see points 29 and 30), the board decided, exercising its discretion under Article 111(1) EPC, to remit the case to the opposition division for adaptation of the description and the drawings to the claims of auxiliary request 3. By doing so the board did not delay any step in the appeal proceedings and was able to reach a final decision at the conclusion of the oral proceedings, in accordance with Article 15(3) and (6) RPBA.

Referral to the Enlarged Board of Appeal (Article 112(1) EPC)
36. The appellant submitted that uniform application of the law required that the board refer the question filed during the oral proceedings (see section VII above) to the Enlarged Board of Appeal if it intended to deviate from decisions T 109/02, T 181/02, T 651/08, T 776/05 or T 2294/08.
37. Pursuant to Article 112(1)(a) EPC, the boards of appeal refer questions to the Enlarged Board, either of their own motion or upon request from a party, in order to ensure uniform application of the law or if a point of law of fundamental importance arises, if they consider that a decision is required for the above purposes.
38. As set out above, none of the five decisions relied on by the appellant called into question the continued existence of the boards' discretion to decide whether - if the duly summoned patentee is absent from the oral proceedings and no description adapted to the amended claims is on file - to exercise the powers of the opposition division or to remit the case. Accordingly, the present decision does not deviate from those cited.
39. Moreover, based on the analysis set out above, the board found a clear answer in the provisions of the EPC and the RPBA. It therefore did not consider a referral to be required.
40. Accordingly, the appellant's request for a referral to the Enlarged Board of Appeal was refused.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the opposition division with the order to maintain the patent on the basis of the set of claims filed as auxiliary request 3 with the letter dated 24 November 2011, and a description and drawings to be adapted thereto.

3. The request for referral to the Enlarged Board of Appeal of the question filed at the oral proceedings before the board is refused.

This decision T 985/11 (pdf) has European Case Law Identifier: ECLI:EP:BA:2015:T098511.20150909. The file wrapper can be found here. Photo "Absent" by Sheila Liza Sperling obtained via Flickr under CC BY 2.0 license (no changes made).

2 comments :

  1. The question at stake might not warrant a referral to the Enlarged Board, and even if the decision is legally correct, it remains nevertheless surprising. It goes clearly against a long line of established case law.
    As far as the procedural economy is concerned, it might well be that the Board is satisfied that his own economy has duly been taken into account.
    If the worse comes to the worse, then there will be an OP for the adaptation of the description and even a further appeal. Where is then the overall economy of procedure?
    The need of certain Boards to attempt distinguishing themselves appears inextinguishable.....

    ReplyDelete
  2. If the worse comes to the worse, then there will be an OP for the adaptation of the description and even a further appeal. Where is then the overall economy of procedure?

    ReplyDelete

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