Tuesday, May 11, 2021 T 2255/15 - Can the Board of Appeal disregard third party observations that were only filed during the appeal proceedings?

In the present case, the appeals lodged by the opponent and the patent proprietor lie from the interlocutory decision of the opposition division that the European patent No 1 369 037 in amended form. Third party observations were submitted in an early stage of the appeal proceedings, as well as in later stages, objecting to novelty and to inventive step w.r.t. newly field documents (existing grounds, but new facts, arguments and evidence). The patent proprietor requested that the third-party observations, with all the documents and annexes referred to in the observations, not be admitted into the proceedings as they were late-filed. However, the RPBA seems to only impose constraints on late-file submissions by parties, as does Art. 114(2) EPC, and not by third parties. How did the Board handle these third party observations: were they admitted and, if so, to what extent?

Summary of Facts and Submissions

I. The appeals lodged by the opponent and the patent proprietor lie from the interlocutory decision of the opposition division that European patent No 1 369 037 in amended form according to the fourth auxiliary request comprising the set of claims filed on 12 May 2015 met the requirements of the EPC.

II. The patent as granted contained ten claims, independent claims 1, 2, 6 and 8 of which read as follows:

"1. Disinfectant in the form of a working mixture which comprises

(a) 0.05 to 1% by weight of 1-(2-ethylhexyl) glycerol ether and

(b) 0.2 to 5% by weight of one or more aromatic alcohols selected from the group consisting of aryloxyalkanols and arylalkanols.".

"2. Disinfectant in the form of a working mixture or of a concentrate, characterized in that it comprises

(a) 1-(2-ethylhexyl) glycerol ether and

(b) one or more aromatic alcohols selected from the group consisting of aryloxyalkanols and arylalkanols,

the weight ratio x of component (a) to component (b) being 0.15 or less.".

"6. Disinfectant in the form of a working mixture which comprises

(a) 0.05 to 0.02% by weight of 1-(2-ethylhexyl) glycerol ether and

(b) 1.0 to 2.0% by weight of phenoxyethanol."

"8. Process for controlling mycobacteria in which a disinfectant which comprises (a) one or more 1- or 2-(C3- to C24-alkyl) glycerol ethers and (b) one or more aromatic alcohols is allowed to act on the surface to be disinfected selected from a medical instrument or a laboratory apparatus."

III. The following documents are referred to in the present decision:

[...] 

IV. The opposition division came to, inter alia, the following conclusions:

- The subject-matter of claims 1 and 2 according to the main request (patent as granted) was not novel in view of the disclosure of each of D1, D2 and D4.

- The subject-matter of claims 1 and 2 according to the first auxiliary request then on file was not novel in view of the disclosure of each of D2 and D4.

- The subject-matter of claim 1 according to each of the second and third auxiliary requests then on file was not novel in view of the disclosure of D4.

- The claims according to the fourth auxiliary request then on file met the requirements of Articles 83, 84, and 123(2) and (3) EPC.

- The subject-matter of the claims according to the fourth request then on file was novel in view of each of D1, D2 and D4 and involved an inventive step in view of D1 or D2 as the closest prior art (Article 56 EPC).

V. In its statement setting out the grounds of appeal, the opponent contested the reasoning of the opposition division and submitted that claim 1 of the fourth auxiliary request then on file was not clear and contained added subject-matter and that its subject-matter was not novel and did not involve an inventive step.

VI. In its statement setting out the grounds of appeal, the patent proprietor submitted that the subject-matter of the claims according to any of the main request (granted claims) and auxiliary requests 1 to 3 ("Set A", "Set B" and "Set C" corresponding to the claims of the first to third auxiliary requests submitted with the letter dated 12 May 2015) was novel and involved an inventive step.

VII. The patent proprietor and opponent are both appellant and respondent in these appeal proceedings and are referred to in the following as "patent proprietor" and "opponent", respectively.

VIII. Third-party observations with documents A006, A007, A012, A014 and A015 were submitted on 16 February 2016, 14 November 2018 and 31 May 2019. Novelty objections were submitted based on A006, D3a and A012. The inventive step of the claimed subject-matter was objected to in view of A006 and D3a. Reference was made to A013.

IX. During the appeal proceedings, the opponent submitted A010 and A011. It objected that the subject-matter of claim 1 and/or claim 2 of the main request and the auxiliary requests corresponding to sets A to C was not novel in view of D1, D2, D4, A006 or A012.

X. During the appeal proceedings, the patent proprietor submitted A008 and counter-arguments with regard to the objections of added subject-matter and lack of clarity, novelty and inventive step. It contested the admittance of A006. It submitted auxiliary requests A' to F', A008a, A009 and A009a.

XI. The board issued a communication pursuant to Rule 100(2) EPC summarising the parties' submissions and requesting that the patent proprietor clarify its requests.

XII. With a further letter dated 10 November 2020, the patent proprietor clarified its requests and submitted sets of claims G-J and G'-I'.

XIII. Oral proceedings before the board were held on 25 February 2021 by videoconference.

XIV. The opponent requested that:

- the decision under appeal be set aside and that the patent be revoked in its entirety

- claim sets A' to F' not be admitted into the proceedings

- if the board should find the subject-matter of the claims of any of the main request and auxiliary requests 1 and 3 novel, the case be remitted to the opposition division

XV. The patent proprietor requested that:

- the decision of the opposition division to maintain European patent EP 1369037 Bl in amended form based on auxiliary request D be set aside and that the patent be maintained as granted

- alternatively, that the patent be maintained in amended form on the basis of any of claim sets A-J or A'-I' in the following order: A, A', B, B', C, C', D, D', E, E', F, F',G, G', H, H', I, I', J

- should the board consider that the subject-matter of the claims of any of claim sets A-C, E-J and G'-I' be novel but not inventive, or should the board consider that claim sets A' to F' do not overcome the objections under Article 84 EPC, the case be remitted to the department of first instance for examination of inventive step or clarity, respectively

- the objections of lack of novelty based on the example of D1 and the objections under Article 84 EPC not be admitted into the proceedings

- should the objections under Article 84 EPC be admitted into the proceedings and should the board consider claim sets A to F to be unclear, claim sets A' to F' be admitted into the proceedings

- the third-party observations filed on 15 February 2016, 14 November 2018 and 31 May 2019, with all the documents and annexes referred to in the observations, not be admitted into the proceedings

- A008, A008a and A009 be admitted into the proceedings

- A010 and A011 not be admitted into the proceedings

XVI. The opponent's case, where relevant to the present decision, may be summarised as follows.

Main request

- Novelty in view of D1

- Example 1 was prejudicial to the novelty of claim 1 of the main request. Furthermore, the combination of paragraphs [0060], [0073] and [0078] of D1 anticipated the subject-matter of claim 2 of the main request.

- Novelty in view of D2

- The subject-matter of claim 2 of the main request lacked novelty in view of example 14. The weight ratio of 1-(2-ethylhexyl) glycerol to phenoxypropanol in this composition was 0.154 and had to be rounded to 0.15.

- Novelty in view of D4

- The composition of chapter III, 2.d) on page 150, of D4 anticipated the subject-matter of claim 1 of the main request.

Auxiliary request 1

- Admittance of the objection of lack of clarity

- The objection of lack of clarity of claim 1 was not a new objection but a new argument. The objection should be admitted into the proceedings.

- Novelty

- The reasons given for the main request applied to the claims of auxiliary request 1. Thus, example 2 of D2 was also prejudicial to the novelty of the subject-matter of claim 2 of auxiliary request 1.

Auxiliary request 3

- Added subject-matter

- The indefinite article "an" in claim 2 of auxiliary request 3 implied that further non- listed aryloxyalkanols and arylalkanols could be present in the disinfectant of the claim, contrary to what was required in claims 4 and 5 as filed.

- The term "or" in claim 2 of auxiliary request 3 implied that if one of the listed compounds was selected, no other listed compound could be present in the disinfectant of the claim, again contrary to what was required in claims 4 and 5 as filed.

- Claim 2 added subject-matter beyond the content of the application as filed.

- Novelty

- The reasons given for the main request applied to the claims of auxiliary request 3.

- Remittal

- The case should be remitted to the opposition division if novelty was acknowledged. The inventive step of the subject-matter of claim 1 of auxiliary request 3 was not assessed by the opposition division considering D4 as the closest prior art. This justified remitting the case to the opposition division.

- Inventive step considering D1 as the closest prior art

- The distinguishing feature of claims 1 and 2 in view of the example of D1, using 2-methyl-4-phenylbutan-2-ol, was the specific aromatic alcohol defined in the claims.

- The activity against Mycobacterium terrae shown in the example of the patent was not to be considered in the formulation of the objective technical problem. First, the effect of controlling mycobacteria was not relevant for cosmetics and only considered to be a bonus effect. Second, if it were accepted that the effect was relevant, the effect was not achieved over the whole scope of claim 1 or 2 of auxiliary request 3.

- The objective technical problem was the provision of an alternative disinfectant composition.

- The solution would have been obvious in view of D1 alone or in view of D1 in combination with D4.

- Inventive step considering D2 as the closest prior art

- The subject-matter of claim 1 of auxiliary request 3 differed from the composition of table V of D2 in the presence of 1-(2-ethylhexyl) glycerol.

- The objective technical problem was the provision of an alternative disinfectant composition.

- The solution would have been obvious in view of D2 in combination with D4.

XVII. The patent proprietor's case, where relevant to the present decision, may be summarised as follows.

Admittance of the third-party observations

- The third-party observations were late-filed and should not be admitted into the proceedings.

Main request

- Admittance of the novelty objection in view of D1

- The objection based on the example of D1 was raised by the opposition division during the oral proceedings. This objection was to be rejected for being late-filed.

- Novelty in view of D1

- A double selection was necessary to arrive at the subject-matter of claim 2: a selection of "Octoxyglycerin" in paragraph [0073] and a selection of the weight ratio of the glycerine ether to the aryl-substituted alcohol, i.e. 1/10 from the different range limits to be made in paragraph [0078]. Furthermore, the aryl-substituted alcohol mentioned in paragraph [0060] was not mandatorily an aryloxyalkanol or an arylalkanol.

- Novelty in view of D2

- The weight ratio of compound (a) to compound (b) (i.e. the weight of 1-(2-ethylhexyl) glycerol to the aromatic alcohol) referred to in claim 2 of the main request was not directly and ambiguously disclosed in D2.

- Novelty in view of D4

- The composition of chapter III, 2.d) on page 150, of D4 did not directly and unambiguously disclose the subject-matter of claim 1 of the main request. The "Glycerinether" used in combination with phenoxyethanol in this composition was not necessarily 1-(2-ethylhexyl) glycerol, i.e. the compound required by claim 1 of the main request.

Auxiliary request 1

- Admittance of the objection of lack of clarity

- The objection of lack of clarity of claim 1 was not raised during the first-instance proceedings and could not be derived from the objection of lack of clarity of claim 5 of the fourth auxiliary request then on file raised before the opposition division. The objection of lack of clarity of claim 1 should have been raised before the opposition division and should not be admitted into the appeal proceedings.

- Novelty

- The reasons given for the main request applied to the claims of auxiliary request 1.

Auxiliary request 3

- Added subject-matter

- Claim 2 of auxiliary request 3 was based on the combination of claims 2, 4 and 5 of the application as filed, except that the terms "oligoalkanol aryl ethers" (found in claim 2 as filed) and "phenoxypropanol" (found in claim 4 as filed) were deleted.

- Claim 2 as filed used the "comprising" language and referred to the wording "one or more aromatic alcohols". It meant that the combination of claim 2 as filed with either claim 4 or 5 as filed allowed the presence of further aryloxyalkanols or arylalkanols in addition to those mentioned in the two claims. The same as in claim 1 of auxiliary request 3 owing to the presence of the indefinite article "an".

- The term "or" used in claim 2 of auxiliary request 3 could not be exclusive since the claim referred for component (b) to "one or more aromatic alcohols".

- Novelty

- 2-methyl-4-phenylbutan-2-ol in the composition of example 1 of D1 was not an arylalkanol as defined in claim 1 of auxiliary request 3.

- The composition of example 14 of D2 comprised, inter alia, phenoxypropanol. This compound was not an aryloxyalkanol encompassed by claim 2 of auxiliary request 3.

- Remittal

- The fact that the opposition division did not assess the inventive step of claim 1 in view of D4 did not justify remittal of the case to the opposition division.

- Admittance of the objection of lack of inventive step based on D4 as the closest prior art

- This objection was raised for the first time during the appeal proceedings. It should have been raised at a previous stage of the appeal proceedings.

- Inventive step considering D1 as the closest prior art

- The distinguishing feature of claims 1 and 2 in view of the example of D1, using 2-methyl-4-phenylbutan-2-ol, was the specific aromatic alcohol defined in the claims.

- The examples in the patent showed that the composition according to claim 1 or claim 2 exhibited an activity against Mycobacterium terrae.

- The objective technical problem was the provision of a disinfectant composition for controlling, inter alia, mycobacteria.

- Neither D1 nor D4 referred to any activity against mycobacteria, and it could not be deduced that any disinfectant would be suitable for controlling mycobacteria.

- Inventive step considering D2 as the closest prior art

- The subject-matter of claim 1 of auxiliary request 3 differed from the composition of table V of D2 in the presence of 1-(2-ethylhexyl) glycerol and its amount (0.05 wt.% is the lowest amount in claim 1).

- In the same way as for D1, the objective technical problem was the provision of a disinfectant composition for controlling, inter alia, mycobacteria.

- D4 would not have rendered obvious the composition of claim 1 of auxiliary request 3 for controlling mycobacteria.

Reasons for the Decision

Admittance of the objections and documents submitted with the third-party observations filed under Article 115 EPC

1. Third-party observations were filed on 15 February 2016, 14 November 2018 and 31 May 2019.

1.1 The patent proprietor requested that the third-party observations dated 15 February 2016, 14 November 2018 and 31 May 2019 and documents A006, A007, A012, A014 and A015 and annexes 1-2 submitted along with them not be admitted into the proceedings.

1.2 In the communication pursuant to Article 15(1) RPBA, the board already expressed its preliminary view on the following points regarding admittance of the third-party observations. The opponent did not contest the board's preliminary view in this respect.

1.3 With the third-party observations of 15 February 2016, documents A006 and A007 and annexes 1-2 were filed. It was argued that document A006 anticipated the subject-matter of granted claims 1 and 4 and that, in view of its relevance, the document should be admitted into the proceedings. Reference was made to annexes 1 and 2. Annexes 1 and 2 demonstrated that the same antimicrobial effect was obtained for different microorganisms with compositions comprising 1-(2-ethylhexyl)glycerol ether and phenoxyethanol at ratios of 0.11, 0.15 and 0.20, i.e. compositions according to the invention and comparative compositions. Furthermore, inventive step of the granted claims and the independent claims of the fourth auxiliary request held allowable by the opposition division (claim set D) was challenged with the disclosure of A006 and A007.

In its observations of 14 November 2018, the third party raised a further objection of lack of novelty in view of D3a and a further objection of lack of inventive step in view of D3a or A014 as the closest prior art. It submitted further arguments for the objection of lack of inventive step in view of A006 as the closest prior art.

A further objection of lack of novelty based on A012 was submitted with the third-party observations of 31 May 2019.

1.4 In its submissions of 15 February 2016 and 14 November 2018, the third party argued that A006 with annexes 1 and 2 were prima facie relevant and should be admitted into the proceedings. Furthermore, the third-party observations were filed at an early stage of the appeal proceedings.

1.5 The board observes that in accordance with the case law of the boards, observations by third parties pursuant to Article 115 EPC can also be filed during an appeal proceedings (T 390/90, G 9/91, OJ 1993, 408, T 1756/11). This interpretation is consistent with the wording of Article 115 EPC, which sets no time limit in this respect (T 390/90, OJ 1994, 808). However, in accordance with the case law, Article 115 EPC must not be interpreted in such a way as to grant third parties rights which extend beyond those of the parties to proceedings (T 951/91, OJ 1995, 202; see also Schachenmann, Article 115 EPC, in Singer-Stauder, The European Patent Convention, Vol 2, 3rd ed.). Since Article 114(2) EPC confers to the bodies of the EPO the discretionary power to disregard submissions not filed in due time, this provision must also apply to observations by third parties. Since the Rules of Procedures of the Boards of Appeals specify some criteria for exercising this discretion in appeal proceedings with respect to the submissions of the parties to the proceedings, in the board's view, these criteria must also apply to third-party observations. Hence, the criteria laid down in Article 12(2) RPBA 2020 and 12(4) RPBA 2007 are to be taken into consideration in deciding whether and to what extent the submissions at issue must be considered.

As set out above, the following objections were raised in the third-party observations:

- lack of novelty of the subject-matter of claims 1 and 4 as granted in view of A006 and D3a

- lack of novelty of the subject-matter of claim 1 of claim set D over A012

- lack of inventive step of the subject-matter of claims 2 and 6 as granted and the claims of all claim sets submitted by the patent proprietor over A006 in combination with A007

- lack of inventive step of the subject-matter of claims 1 and 4 as granted and claim 1 of claim sets A' to F' over A014 as the closest prior art in combination with A015

- lack of inventive step of the subject-matter of claim 1 as granted and claim 1 of claim sets A' to C' over D3a

None of these objections had been raised before in the opposition or appeal proceedings. Document A006 is a document discussed in the context of novelty of the granted claims. It is also discussed, in combination with annexes 1-2, in the context of inventive step of the claims of auxiliary request 7 (claim set D). Annexes 1 and 2 were filed to show activity of compositions according to the invention and compositions not according to the invention. The submission of A006 and annexes 1-2 does not constitute a direct and timely response to facts, objections, arguments or evidence on which the decision under appeal is based. The third-party observations of 15 February 2016 do not provide any argument why the impugned decision would not be correct and which would justify the submission of A006 and annexes 1-2. The same reasoning applies with regard to the attack of lack of inventive step over A006 in combination with A007; A014 and the attack of lack of inventive step based on this document as the closest prior art; the attack of lack of novelty based on D3a; and the attack of lack of novelty based on document A012.

Thus, the objections contained in the third-party observations filed on 15 February 2016, 14 November 2018 and 31 May 2019 (i.e. based on documents D3a, A006, A007, A012, A014 and A015) could and should have been made in opposition proceedings.

Furthermore, the purpose of appeal proceedings is to review the opposition division's decision rather than to start a second opposition proceedings (Article 12(2) RPBA 2020). However, admitting the new objections into the proceedings would have meant exactly that, namely it would have offered the third party and thus also the opponent a second go at opposition proceedings.

Therefore, the objections based on documents D3a, A006, A007, A012, A014 and A015 raised in the third-party observations filed on 15 February 2016, 14 November 2018 and 31 May 2019, as well as the submissions made by the opponent on the basis of these objections, were not admitted into the proceedings according to Articles 12(4) RPBA 2007 and 12(2) RPBA 2020.

Main request claims as granted

2. Admittance of the novelty objection in view of D1

2.1 An objection of lack of novelty in view of the only example on page 11 of D1 was raised by the opposition division during oral proceedings (see the minutes, page 1, "Main Request (patent as granted)"). The impugned decision discusses this objection (point 17 of the decision), and it was held that the example of D1 was prejudicial to the novelty of claim 1 of the main request.

2.2 The patent proprietor requested that this objection not be admitted.

2.3 In the communication pursuant to Article 15(1) RPBA, the board already expressed its preliminary view on the admittance of the novelty objection in view of D1.

In line with this communication, the board observes that, according to the minutes of the opposition division, "The parties did not make further submissions to what had been put forward in written" (page 1, "Main Request (patent as granted)"). This implicitly means that the parties, i.e. the opponent and the patent proprietor, were asked whether they wanted to comment on, inter alia, the objection based on the example of D1. Thus, the patent proprietor had during oral proceedings before the opposition division the opportunity to present arguments against the admittance and relevance of the attack based on the example of D1 but did not make any submission in this regard. Neither did the patent proprietor use the opportunity to request a break to react to this attack or an adjournment of the oral proceedings. Thus, the patent proprietor had been given sufficient opportunity to present its comments on the only example of D1 before any decision was issued. The evidence based on this example, and on which the decision was based, had been identified and communicated to the patent proprietor in a proper way.

Thus, the board did not see any reasons why the objection of lack of novelty in view of the only example of D1 raised during oral proceedings before the opposition division should not have formed a basis for the appealed decision (Article 12(2) RPBA 2020). As this was not disputed by the proprietor during the oral proceedings, the board decided to admit the objection into the proceedings.

3. Novelty

[...]

4. In view of the above lack of novelty of the subject-matter of claims 1 and 2, the main request is not allowable.

Auxiliary request 1 - Claims 1-7 of "Set A" filed on 12 May 2015

[...]

8. Auxiliary request 1 is thus not allowable.

Auxiliary request 3 - Claims 1-7 of "Set B" filed on 12 May 2015

11.6 The board thus concludes that the subject-matter of the claims of auxiliary request 3 is novel in view of any of D1, D2 and D4.

12. Remittal

12.1 The opponent requested that the case be remitted to the opposition division if novelty was acknowledged.

12.2 In accordance with Article 11 RPBA 2020, the board must not remit a case unless special reasons present themselves for doing so. As a rule, fundamental deficiencies apparent in the proceedings before the first-instance department constitute such special reasons.

In the case at hand, the board is not aware of any fundamental procedural deficiencies before the opposition division justifying remittal.

12.3 The opponent submitted that the opposition division did not assess the inventive step of the subject-matter of claim 1 of auxiliary request 3 in view of D4 as the closest prior art. Thus, the case should be remitted.

The attack starting from D4 as the closest prior art was filed for the first time during the oral proceedings before the board and thus is an entirely new attack. If by filing such a new attack, a party could force the board to remit the case, it would be at the party's disposition to shift the case back to the first instance at whatever stage of the appeal proceedings and to thereby start, at any point in the appeal proceedings, a new opposition before the opposition division. This would not only run counter to the principle of procedural economy but to the very nature of appeal proceedings, which is to review the appealed decision (Article 12(2) RPBA 2020) rather than to allow for the start of a second opposition proceedings.

Consequently, the board decided that the case was not to be remitted to the opposition division for further prosecution.

13. Inventive step

14. The board thus comes to the conclusion that auxiliary request 3 is allowable.

15. Admittance of A010 and A011

Documents A010 and A011 invoked by the opponent are press publications of the patent proprietor that disclose that the claimed compositions were used as "preservatives for cosmetics and toiletries". During the oral proceedings, the opponent did not rely on these documents. There was thus no need to decide on their admittance.

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 claims of auxiliary request 3 "Set B" aa submitted with letter of 12 May 2015 and a description to be adapted thereto.

This decision T 2255/15 () of 25.2.2021 (pdf) has European Case Law Identifier: ECLI:EP:BA:2021:T225515.20210225. The file wrapper can be found here. Photo "#52 Too late" by Marc Samsom obtained  via Flickr under CC BY 2.0 license (no changes made).