Friday, 17 February 2017

T 2602/12: Appellant accused of non-appropriate behavior


In this opposition appeal the Respondent (Opponent) accused the Appellant (Proprietor) of gaining procedural advantages, misleading the public and delaying the proceedings. 
The claim that was granted by the Examining Division had a features that was claimed as "the step xyz is carried out according to a process selected from the group consisting of (i)...., (ii)..., and (iii)....".  In the Opposition proceedings this claim was refused because the process (ii) was considered not to be inventive. 
The decision of the Board relates to a main request wherein the above feature was limited to "the step xyz is carried out according to process (i)". According to the Respondent this request was about equal to a request that was withdrawn during oral proceedings before the Opposition Division. Thus, the Appellant filed a main-request in which one non-inventive alternative of three was removed from the refused claim, while the Appellant withdrew a request to this extent during the first instance proceedings. Is such a main request admissable? Did the Board think this is a procedural advantages, is misleading the public and is delaying the proceedings?
Further, during the Opposition proceedings and during most of the Appeal proceedings, the Respondent did not file inventive step arguments against alternative (i). At oral proceedings they were filed for the first time. What did the Board think about this behavior of the Respondent?



Summary of Facts and Submissions
I. The Appellant (Proprietor of the Patent) lodged an appeal against the decision of the Opposition Division revoking European patent No. 1 648 534.
II. Claim 1 as granted reads as follows:
"A method for making an antimicrobial medical device, comprising the steps of:
(a) forming a polymerizable dispersion comprising silver nanoparticles and having a stability of at least 60 minutes, wherein the step of forming the polymerizable dispersion is carried out according to a process selected from the group consisting of:
(i) adding a desired amount of a soluble silver salt into a fluid composition which comprises a siloxane-containing macromer and a vinylic monomer capable of reducing silver cations,
(ii) adding at least one biocompatible reducing agent into a fluid composition which comprises a siloxane-containing macromer and a soluble silver salt, and
(iii) first obtaining a stabilized silver nano-particle solution or lyophilized stabilized silver nano-particles and then directly dispersing a desired amount of the stabilized silver nano-particle solution or lyophilized stabilized silver nano-particles in a polymerizable fluid composition comprising a siloxane-containing macromer,
(b) introducing an amount of the polymerizable dispersion into a mould for making a medical device; and
(c) polymerizing the polymerizable dispersion in the mould to form the antimicrobial medical device containing silver nano-particles."
[...]
IV. The Opposition Division found that the invention was sufficiently disclosed, but that the subject-matter of claim 1 of the then pending main request (patent as granted), more particularly the method wherein step (a) was carried out according to process (ii), was not inventive.
[...]
VIII. Claim 1 of the main request reads as follows:
"A method for making an antimicrobial medical device, comprising the steps of:
(a) forming a polymerizable dispersion comprising silver nanoparticles and having a stability of at least 60 minutes, wherein the step of forming the polymerizable dispersion is carried out by:
adding a desired amount of a soluble silver salt into a fluid composition which comprises a siloxane-containing macromer and a vinylic monomer capable of reducing silver cations,
(b) introducing an amount of the polymerizable dispersion into a mould for making a medical device; and
(c) polymerizing the polymerizable dispersion in the mould to form the antimicrobial medical device containing silver nano-particles."
[...]
Reasons for the Decision
[...] 
2. Admissibility of request
2.1 The Respondent requested that inter alia the main request filed by the Appellant with letter dated 13 September 2016 should not be admitted into the proceedings, citing Article 12(4) RPBA in this respect. More particularly, it argued that a request almost identical to this request was withdrawn during oral proceedings before the Opposition Division, which made it apparent that the Appellant had adopted this tactic to gain a procedural advantage. More particularly, it was withdrawn to prevent the department of first instance from giving a reasoned decision on critical issues, possibly even to avoid an adverse decision thereby. Moreover, the withdrawal of the request misled the general public into believing that the Appellant no longer intended to pursue its subject-matter. Furthermore, its reintroduction on appeal led to an overall delay to the proceedings.
2.2 Appeal proceedings are based inter alia on the statement of grounds of appeal filed pursuant to Article 108 EPC, said statement containing the party's complete case (see Article 12(1) and (2) RPBA). The Board may however hold inadmissible requests which could have been presented in the first instance proceedings (see Article 12(4) RPBA).
2.3 The Appellant has restricted claim 1 of the main request to a method of making an antimicrobial medical device, wherein step (a) is carried out according to process (i) according to claim 1 as granted. Said request is almost identical to auxiliary request 4 filed with the statement of grounds of appeal, differing therefrom only by virtue of replacement of the term "comprises" in claim 1 by other language. The inventiveness of this particular embodiment of the method has never been attacked by the Respondent.
2.4 The Board holds that the filing with the statement of grounds of appeal of a request, namely auxiliary request 4, wherein subject-matter which was found unallowable by the first instance has been deleted, said request thereby being restricted to subject-matter for which no negative decision has been issued by the Opposition Division, deprives the contested decision of its basis, and is legitimate behaviour of a losing party. The minor amendment to claim 1 of this request, which resulted in the present main request, was to overcome the Respondent's objections under Articles 123(2) and (3) EPC thereto, and is therefore considered to be necessary and appropriate. This behaviour of the Appellant is thus not considered to constitute an abuse of procedure.
2.5 For the following reasons, the Board cannot conclude that the Appellant had adopted this tactic to gain a procedural advantage.
2.5.1 The withdrawal before the Opposition Division of a request directed to a method comprising process step (i) did not prevent the department of first instance from giving a reasoned decision on this subject-matter, since said method was a part of the subject-matter of granted claim 1 on which the Opposition Division did indeed take a decision. However, inventive step of a method comprising process step (i) had not been challenged by the Opponent before the Opposition Division. It is thus not plausible that such a request was withdrawn to avoid an adverse decision on it.
2.5.2 With regard to the Respondent's argument that the general public was misled by the behaviour of the Appellant in withdrawing said request before the Opposition Division, the Board draws attention to the fact that there are many reasons why a patent proprietor may file and withdraw requests. However, withdrawal of a request does not constitute abandonment of its subject-matter, such that the public should not interpret withdrawal of a request before the first instance in this manner.
2.6 Thus, the Board holds that the Appellant gains no procedural disadvantage by filing the present main request at this stage of the proceedings. Nor is the Respondent disadvantaged, as it has had the opportunity to develop a case against the subject-matter of this request since the grant of the patent.
2.7 Under these circumstances, the Board in the exercise of its discretion under Article 12(4) RPBA, admits the main request into the proceedings.
[...]
5. Inventive step
5.1 In the oral proceedings before the Board, the Respondent objected for the first time in opposition-appeal proceedings to the inventiveness of the subject-matter of the present main request, namely to the embodiment of the method comprising process step (i) according to granted claim 1. In the communication of the Board accompanying the summons to oral proceedings (see point VI above), the Board expressly indicated that the inventiveness of the method comprising process step (i) had not been contested.
5.2 Article 99(1) and Rule 76(c) EPC require that as a general rule an opponent's case against an opposed patent should be set out fully and completely in the notice of opposition, and should not be presented and developed piecemeal. In addition, according to Article 12(2) RPBA, the statement of grounds of appeal and reply shall contain a party's complete case and should specify expressly all the facts, arguments and evidence relied on. Any amendment to a party's case after it has filed its grounds of appeal or reply may be admitted and considered at the Board's discretion (Article 13(1) RPBA).
5.3 In the present case, prior to the oral proceedings before the Board, the Respondent had never raised any objection under Article 56 EPC to the subject-matter of the present main request, either before the Opposition Division or before the Board, said subject-matter being an embodiment of granted claim 1 and being comprised in claim 1 of every request ever on file in this case. Allowing the Respondent to raise an inventive step argument against an embodiment of the method never previously attacked under Article 56 EPC at this late stage of the proceedings would raise issues which the Board and the Appellant could not reasonably be expected to deal with without adjournment of the oral proceedings (Article 13(3) RPBA).
5.4 As reason for this late submission, the Respondent argued that until the oral proceedings before the Board, it had been sufficient to attack the methods comprising process steps (ii) or (iii) in order to destroy the patent.
However, together with its statement of grounds of appeal (see point V above), the Appellant filed inter alia auxiliary requests 4 to 7, wherein the subject-matter of claim 1 of each request was restricted to a method comprising process step (i) according to granted claim 1, such that at the latest at this stage of the proceedings, the Respondent could, and should have attacked this subject-matter under Article 56 EPC, had it so wished.
5.5 Thus, under the present circumstances, the Board exercises its discretion not to admit the late filed argument into the appeal proceedings.
5.6 In view of the prior art cited in these proceedings, the Board sees no reason to raise its own objections under Article 114(1) EPC against the inventive step of the claimed subject-matter, such that the patent may be maintained in this amended form.
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 main request (claim 1 as filed with letter dated 13 September 2016 and claims 2 to 14 as filed during the oral proceedings before the Board) and a description to be adapted.
This decision T 2602/12 (pdf) has European Case Law Identifier:  ECLI:EP:BA:2016:T260212.20161013. The file wrapper can be found here. Photo "Three Doors" by Tim Green obtained via Flickr under CC BY 2.0 license (no changes made).

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