Friday, 23 July 2010

T 232/08 – Too Late

If, when preparing oral proceedings (OPs) in an opposition appeal case, you realize that a document you used in an inventive step argument (but which you did not use in your - first instance - novelty attacks) is in fact destructive of novelty, are there any chances of having the novelty argument examined in the OPs? Well, it always depends on the Board, but chances are not good, as illustrated by the present decision.

[2] In accordance with Article 12(2) of the Rules of Procedure of the Boards of appeal (RPBA) “the statement of grounds of appeal and the reply shall contain a party’s complete case. They shall set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed, amended or upheld and should specify expressly all the facts, arguments and evidence relied on”.

[3] Article 13(1) RPBA leaves it to the discretion of the board to admit amendments to a party’s case after it has filed its grounds of appeal or reply. Aspects to be looked at when exercising the discretion are according to Article 13(1) RPBA inter alia the complexity of the new subject-matter, the current state of the proceedings and the need for procedural economy.

[4] However, a stricter criterion is applied to amendments sought to be made after OPs have been arranged. According to Article 13(3) RPBA these amendments “shall not be admitted if they raise issues which the Board or the other party or parties cannot reasonably be expected to deal with without adjournment of the OPs.” Thus, the parties’ right to be heard and/or procedural economy take precedence over other considerations.

[5] The objection of lack of novelty based on document D11 was raised for the first time during the whole opposition and appeal proceedings at the OPs before the board.

[6] Although lack of novelty was mentioned as a ground of opposition and was dealt with in the decision under appeal, it was not relied on at all in the statement of the grounds of appeal. Furthermore, document D11 was only introduced during the appeal proceedings and then only in the context of inventive step and even then only as evidence of common general knowledge of particle size […]. Thus, in the board’s view, the [patent proprietor] had every reason to believe that novelty was no longer pursued as a ground of opposition in the appeal and that document D11 formed only a limited part of the [opponent’s] case on inventive step.

[7] Moreover, in the board’s view the disclosure in document D11 of possibly novelty-destroying subject-matter is not particularly striking. This view is supported by certain of the [opponent’s] submissions: although the summary of the teaching in document D11 submitted with the statement of the grounds of appeal […] mentions hyaluronic acid, spray-drying and a particle size range falling under the one mentioned in claim 1, the document is only cited in the context of inventive step. Further, the [opponent] conceded at the OPs that the novelty-destroying character of the disclosure in document D11 only occurred to it during preparation for OPs. Therefore, in the board’s view, it cannot be expected that the [patent proprietor] would have foreseen the objection of lack of novelty on the basis of document D11 itself.

[8] In all the circumstances of the present case, the board considers that the [patent proprietor’s] right to be heard with regard to the novelty-objection based on document D11 would have been respected only if the OPs had been adjourned or the case had been remitted to the department of first instance in order to allow the [patent proprietor] adequate consideration of the [opponent’s] objection.

Consequently, applying Article 13(3) RPBA, the board has decided not to allow the [opponent] to present its novelty objection based on document D11.

If you wish to download the whole decision, please click here.