Wednesday, February 15, 2023 T 2303/19 - In person oral proceedings are for now (no Covid-19 related travel restrictions) the optimum format as expressed in decision G 1/21

In the present opposition appeal case, the parties were summoned to attend oral proceedings at the EPO premises. The appellant requested that the oral proceedings take place by videoconference. The respondent did not consent to this request and suggested a mixed mode format. The Board decided to hold the oral proceedings in person, as at the relevant time there were no Covid-19 related travel restrictions which would impair the parties' possibilities to attend in person oral proceedings at the EPO premises, and that in person oral proceedings are for now the optimum format as expressed in decision G 1/21 (see here).

Summary of Facts and Submissions

I. European patent No. 2 851 087 was granted on the basis of a set of 13 claims.

Independent claim 1 as granted read as follows:

"1. A freeze-dried composition comprising a live, attenuated flavivirus vaccine, one or more stabilizers, lactose, amorphous mannitol, and one or more buffer components."

II. An opposition was filed under Article 100 (a), (b) and (c) EPC against the granted patent on the grounds that the subject-matter of the granted patent lacked novelty and inventive step, was not sufficiently disclosed, and extended beyond the content of the application as filed.

III. The appeal lies from the decision of the opposition division to revoke the patent.

IV. The decision was based on the claims as granted as main request and eight auxiliary requests.

V. The documents cited during the opposition proceedings included the following:

D1 [...] - D24 [...]

VI. According to the decision under appeal, claims 4 and 5 of the main request complied with Articles 76(1) and 123(2) EPC. As the new objections under Article 100(c) EPC against claims 1, 2, 10 and 12 were late filed and prima facie not relevant, the opposition division disregarded these objections under Article 114(2) EPC.

D3 did not anticipate the claimed subject-matter.

With regard to inventive step, [...]

The objections raised by the opponent under [...] 

Auxiliary request 2 was not inventive. [...]

Auxiliary requests 3-6 were not admitted into the opposition proceedings under Rule 116(1) EPC. Auxiliary request 7 was not inventive and auxiliary request 8 contravened Article 76(1) EPC .

VII. The patent proprietor (hereinafter the appellant) filed an appeal against said decision. With the statement setting out the grounds of appeal dated 24 October 2019, the appellant submitted auxiliary requests 1-9 and the following item of evidence:

D28: [...]

Claim 1 of auxiliary request 1 read as follows, the difference(s) compared with claim 1 as granted shown in bold: [...]

VIII. With a letter dated 19 February 2020, the opponent (hereinafter the respondent) submitted the following evidence:

D29: [...]

IX. A communication from the Board, dated 18 August 2022, was sent to the parties. In it the Board expressed its preliminary opinion that inter alia, the main request was not inventive.

X. With a letter dated 3 November 2022, the appellant submitted an annex which contained an annotated version of Figure 1 of document D9.w

XI. The parties were summoned to attend oral proceedings at the EPO premises. The appellant requested in its letter dated 3 November 2022 that the oral proceedings take place by videoconference. The respondent did not consent to this request and suggested a mixed mode format. Thereafter the appellant indicated that if the hearing were to take place in mixed mode the appellant's representative would attend in person, and asked for the appellant's in-house Counsel to attend remotely. In a communication dated 24 November 2022 the Board informed the parties that it had decided to hold the oral proceedings in person.

XII. Oral proceedings took place at the premises of the EPO on 7 December 2022. At the beginning the Chairman asked the parties whether they wished to comment on the format of the oral proceedings. The parties said that they did not.

XIII. The arguments of the appellant may be summarised as follows:

Admission of D28 into the appeal proceedings

[...]

Main request - Inventive step

[...]

XIV. The arguments of the respondent may be summarised as follows:

Admission of D28 and D29 into the appeal proceedings

[...]

Main request - Inventive step

[...].

XV. Requests

The appellant (patent proprietor) requested that the decision under appeal be set aside and the patent be maintained as granted (main request), or that the patent be maintained on the basis of one of auxiliary requests 1-9 filed with the statement of grounds of appeal dated 24 October 2019.

They also requested that document D28, also filed with the statement of grounds of appeal, be admitted into the proceedings.

The respondent (opponent) requested that the appeal be dismissed. They also requested that D28 not be admitted into the proceedings. They furthermore requested that D29 be admitted in case D28 is admitted.

Reasons for the Decision

1. Format of the oral proceedings

The appellant's reasons for requesting that the oral proceedings take place by videoconference were two-fold. Firstly, this format would facilitate attendance at the hearing by the appellant's in-house counsel. Secondly, it would reduce the risk of any last minute travel disruption which may occur due to the uncertainty surrounding Covid-19 cases.

The Board agrees with the respondent that at the relevant time there were no Covid-19 related travel restrictions which would impair the parties' possibilities to attend in person oral proceedings at the EPO premises, and that in person oral proceedings are for now the optimum format as expressed in decision G 1/21. The Board also considers that the possible attendance of an accompanying person cannot determine the format of the oral proceedings. The Board thus decided that the oral proceedings take place in person.

2.-[5] [...]

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 auxiliary request 1 filed with the statement of grounds of appeal dated 24 October 2019 and a description to be adapted thereto.

This decision T 2303/19 (Stabilization of vaccines by lyophilization/ SANOFI) of 7.12.2022 (pdf) has European Case Law Identifier: ECLI:EP:BA:2022:T230319.20221207. The file wrapper can be found here. Photo "meeting room" by cdu445 via Pixabay under CC0 license (no changes made).