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.
