Tuesday, 24 July 2018

T 1029/14 Keep Out! Fresh ground of opposition?

Like the decision discussed in the previous blog, the Board in this opposition appeal case refused to admit, due to lateness of the submission, an inventive step attack based on a single document (D1), which had been used in opposition to substantiate lack of novelty only. The ground of inventiveness was mentioned in the Notice of opposition, but not substantiated. The Board's refusal under Art 13(3) RPBA was unsurprising, given that the arguments for lack of inventiveness were presented for the first time only 2 working days before oral proceedings were held, and the patent proprietor would have needed an adjournment to prepare its response.
The Board went further, however, and also considered whether this inventive step attack constituted a fresh ground of opposition that could be admitted into proceedings only with the permission of the patent proprietor. The appellant argued that the new attack was admissible, for the reasons allowed in T 0131/01.

The Board took the view that the facts in this case were different, because the appellant had made no suggestion in opposition proceedings that the claimed subject-matter would be obvious when starting from D1, should it be found to be novel. The reasoning of T 448/03 was followed, and the Board concluded that an objection concerning inventive step is to be considered a fresh ground, if it is raised for the very first time in the appeal proceedings, irrespective of the fact that the document used as the starting point for the inventive step objection was the same document as used before to attack novelty.

Tuesday, 17 July 2018

T 181/17 - Inventive step attack with document used for novelty attacks as closest prior art

The introduction of new grounds during opposition and opposition appeal proceedings may be difficult, but also the introduction of new lines of reasoning in support of raised grounds of opposition. A raised ground of lack of inventive step may allow assessment of novelty in view of  the closest prior art - G 7/91 and Guidelines (2017) D-III, 5. Also, in a case where a patent has been opposed under Article 100(a) EPC on the grounds of lack of novelty and inventive step having regard to a prior art document, and the ground of lack of novelty has been substantiated, a specific substantiation of the ground of lack of inventive step is neither necessary - given that novelty is a prerequisite for determining whether an invention involves an inventive step and such prerequisite is allegedly not satisfied - nor generally possible without contradicting the reasoning presented in support of lack of novelty; in such a case, the objection of lack of inventive step is not a fresh ground for opposition and can consequently be examined in the appeal proceedings without the agreement of the patentee - T 131/01. One would expect that introducing a new line of attack for an existing ground to be less difficult, e.g. when introducing a new inventive step attack using a document used for novelty as closest porior art. However, in the case below, the inventive step attack based on D17 -not admitted in first instance proceedings, but filed with and admitted into the appeal and used for several novelty attacks- as the closest prior art was not admitted into the proceedings in accordance with Article 13(1) Rules of Procedure of the Boards of Appeal (which provides that 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, where the discretion shall be exercised in view of inter alia the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy.)

Wednesday, 11 July 2018

R 0003/17 - Another unsuccessful petition

This petition for review was filed against a decision of the BoA based on two main objections of the petitioner/patent proprietor:

(a) the Opposition Division did not allow for a fair debate during opposition proceedings, and did not give reasons in its decision of revoking the patent, on the admissibility of a disclaimer in claim 1, thus depriving the applicant/patent proprietor of the possibility of having this point re-examined in second instance proceedings. The BoA  further violated Rule 104(b), EPC  because it failed, upon request of rectification of the petitioner, to report such objection in the minutes of the oral appeal proceedings.

(b)   the BoA violated Art. 20(1) and Art. 21, RPBA and consequently Art. 113(1), EPC because the BoA appeared to deviate from the interpretation of Art. 123(2), EPC given by the Enlarged Board in G2/10.

The petition is rejected as clearly not well founded. 

Regarding (a): the patent proprietor had requested together with rectification of the minutes,  reimbursement of the appeal fee for the reasons given in (a) contested to the Opposition Division (see also point 2.1 of the present decision). However, the Enlarged Board is of the opinion that these requests were clearly abandoned by the respondent and thus there could not be any breach of Rule 104(b), EPC.

Regarding (b): the Enlarged Board simply states that an erroneous application of a rule of the RPBA is not per se ground for petition of review unless this brings to a substantial procedural defect under Art. 112a, EPC which appears not to be the case here.

Friday, 6 July 2018

T 0156/15 - Admissibility of expert evidence and tactically filed requests

Does it help to submit an expert opinion regarding added matter in a divisional application (Art. 76(1) EPC), when the expert is a well-known former chair of a technical Board of Appeal and member of the Enlarged Board of Appeal? And how far will the Board go in admitting requests submitted during oral proceedings in response to the Board’s deliberations on previous requests?

European patent No. 2 106 790, based on European patent application No. 09007867.6, was filed as a divisional application of European patent application No. 05728268.3. Opposition to the patent was filed by one opponent. By interlocutory decision of the Opposition Division, the patent in suit was maintained in amended form according to Auxiliary Request 1. This Auxiliary Request 1 only differed from the patent as granted in an amendment introduced in paragraph [0020] of the description. Claim 1 of auxiliary request 1 was identical to claim 1 of the patent as granted, which reads:

"1. A composition, which has been prepared in a solution, comprising a therapeutically effective dose of insulin or insulin derivative, ions of citric acid, and a zinc metal chelator effective to dissociate the insulin into monomers or dimers, in a form suitable for subcutaneous administration".

The amendment to paragraph [0020] of the description resulted in citric acid no longer being listed as a suitable chelator, but only as a solubilising acid, thus arguably rendering the claim novel over prior art document D2.

Both parties appealed the decision. The opponent argued, inter alia, that the patent was not in compliance with Art. 76(1) EPC, as the parent patent nowhere disclosed “ions of” of any acid as solubilising agent.

During oral proceedings, the Board came to the conclusion that by admitting submissions made by a former Board member, however eminent that person might be, it would attach undue weight to the individual making the argument rather than focus on the argument itself. Accordingly, the expert opinion was not admitted into the proceedings – rather, the Board allowed the proprietor to rely on the arguments presented therein merely as his own submissions.

Regardless, the Board found that the Main Request – identical to claim 1 as granted - does not comply with the requirements of Article 76(1) EPC, since it cannot be directly and unambiguously derived from the earlier application that the compositions of claim 1 inevitably contain the ionic form of the acids. Auxiliary requests filed sequentially in response the Board’s deliberation in this matter and on the admissibility of the requests itself were not admitted for lack of prima facie relevance or raising new issues. The Board further stressed that by adjusting its strategy to the results of the Board's deliberation, the proprietor puts the opponent in a position where it is difficult to react. For this reason, in principle, the Board could have refused these requests even without also considering the specific criteria for the exercise of its discretion to admit new auxiliary requests.

The only remaining request not violating Art. 76(1) EPC – i.e., relating to compositions containing an acid in its non-dissociated (no ions) form – then led to an inescapable trap (Art. 123(3) EPC) situation, and the patent was revoked.

Tuesday, 3 July 2018

T 1898/14 - change of mind of the proprietor

The opposition division decided to maintain the European patent in amended form and the opponent lodged an appeal requesting revocation of the patent.

The proprietor initially requested dismissal of the appeal. However, upon summons to oral proceedings, the proprietor changed his mind and withdrew its approval of the text of the patent in any form and requested revocation of the patent. While the latter request could not be allowed by the BoA in view of Art. 105a(2) which excludes requests of revocation while appeal opposition proceedings are pending, the former withdrawal is accepted by the BoA in line with established case law (see for example T 73/84).