Tuesday, 15 February 2011

T 5/08 – Locked Out

The appeal was against the decision of the Opposition Division (OD) to revoke the opposed patent. The Board found the main request on file not to comply with A 123(2) because the disclaimer inserted by the patent proprietor was not large enough and, therefore, did not fulfil the conditions fixed by G 1/03.

The Board then deals with the admissibility of the auxiliary request that was filed during the oral proceedings (OPs), after several versions had been filed and withdrawn.

[11] Articles 12(2),(4) and 13(1) RPBA are relevant for assessing the admissibility of the auxiliary request. Article 12(2) RPBA requires the statement of grounds of appeal to contain the appellant’s complete case. Article 13(1) RPBA leaves to the board’s discretion to consider and admit any amendment to a party’s case after it has filed its grounds of appeal or a reply thereto. In the exercise of its discretion, account is to be taken of inter alia the current state of the proceedings. Article 12(4) RPBA refers to the power of the board to hold inadmissible requests which could have been presented in the first instance proceedings.

[12] The subject-matter of the auxiliary request at issue is directed to a pair of oligonucleotides consisting of a first and a second oligonucleotide consisting, respectively, of the sequences SEQ ID NO: 1 and 5 […]. The combination of this pair of oligonucleotides is disclosed in the patent-in-suit and in the application as filed as “a most preferred pair of oligonucleotides according to the invention” […] and, accordingly, it is the subject-matter of a dependent claim in the claims as granted (claim 3) and in the original claims of the application as filed (claim 5). However, both in the patent-in-suit and in the application as filed, the pair of oligonucleotides is not directed to the very specific oligonucleotides of sequences SEQ ID NO: 1 and 5 but to general sequences having a total length of 10-50 nucleotides (original and granted claims) - or 10-26 nucleotides (granted claims) - and comprising a fragment of at least 10 nucleotides of these SEQ ID NO: 1 and 5 (original and granted claims).

[13] A similar subject-matter is also found in the requests dealt with at the OPs before the first instance and decided upon by the OD as well as in several of the claim requests filed by the [patent proprietor] with its statement of grounds of appeal. However, none of these requests - either in the opposition or in the appeal proceedings - contemplated a pair of oligonucleotides with the first and second oligonucleotides restricted to the very specific oligonucleotides of sequences SEQ ID NO: 1 and 5, respectively. This is all the more surprising since the experimental reports filed by the [patent proprietor] in the opposition proceedings and with its statement of grounds of appeal contained data derived from such a specific pair of oligonucleotides.

[14] Thus, even though the objection of lack of inventive step put forward by the OD in the decision under appeal was mainly based on the scope of the claims, in the words of the OD
“ … it is even reasonable to assume that not all the primer pairs … are effective in amplifying HIV. Hence, the problem is not solved over the whole claimed range and consequently the claim is not inventive over the whole claimed scope …” (underlining added by the board), the [patent proprietor] chose not to file a request specifically directed, and limited to, a pair of oligonucleotides as that claimed in the present auxiliary request which was characterized, both in the patent-in-suit and in the application as filed, as a preferred embodiment of the invention. Nor was such a request filed in the [patent proprietor’s] reply to the board’s communication pursuant to Article 15(1) RPBA, even though the pair of oligonucleotides of sequences SEQ ID NO: 1 and 5 was identified in that communication (albeit in the context of A 123(2),(3)) and the issue concerning the scope of the claims was also mentioned therein […].

[15] It was only at the beginning of the OPs before the board that the [patent proprietor] filed - as its second auxiliary request - a request which intended to limit the claimed subject-matter to the specific pair of oligonucleotides consisting of a first and a second oligonucleotide of the sequences SEQ ID NO: 1 and 5, respectively. However, this auxiliary request presented several deficiencies which required the [patent proprietor] to necessarily introduce further amendments and modifications.

In all, five different versions of the auxiliary request were submitted at the OPs before the board, each time replacing the previously submitted version. Except for the last version, all other versions of the auxiliary request were withdrawn before the board decided on their admissibility […]

[16] There is no doubt that the auxiliary request is a very late filed request. No convincing reasons have been provided by the [patent proprietor] to justify its filing at this very late stage of the proceedings. Indeed and in view of the above mentioned facts, the board considers that such a request limited to a preferred embodiment of the invention could well have been filed at an earlier stage of the appeal or the opposition proceedings, either with the [patent proprietor’s] statement of grounds of appeal - so as to have a complete case as required by Article 12(2) RPBA, in reply to the board’s communication pursuant to Article 15(1) RPBA, or even at first instance in order to overcome the objection of the opposition division regarding the breadth of the claims (Article 12(4) RPBA). The [patent proprietor’s] choice not to file such a request deprived the respondents of the opportunity for preparing and presenting their case appropriately and it certainly did not contribute to the procedural economy of the present case.

[17] This situation is further aggravated by the fact that the present auxiliary request, as such, has not been directly put forward by the [patent proprietor] itself but it is the final result of a lengthy discussion between the respondents, the [patent proprietor] and the board that took place at the OPs and occasioned the introduction of several amendments, modifications and changes, in several different versions of a first filed auxiliary request […]. This chain of events is not in line with the function of an appeal proceedings as established in the case law of the Boards of Appeal, namely to give a judicial decision upon the correctness of a separate earlier decision taken by a department of the EPO (cf. “Case Law of the Boards of Appeal of the EPO”, 6th edition 2010, VII.E.1, page 821).

As repeatedly stated in the case law, it is not the purpose of an appeal proceedings to give the patent proprietor the opportunity to recast its claims as it sees fit and to have all its requests admitted into the appeal proceedings - a principle mirrored in Articles 12(4) and 13 RPBA (cf. inter alia decision T 361/08 [14]).

[18] As for the [patent proprietor’s] argument that the auxiliary request represents the [patent proprietor’s] last chance to save the patent […], the board considers this argument inappropriate to justify, in the present case, the very late filing of the auxiliary request and the complete chain of events or the history of its prosecution as cited above. It has also been clearly established by the Boards of Appeal that there is no absolute right for a patentee to such a last chance. On the contrary, the admissibility of a late filed request is always a matter of the board’s discretion (cf. inter alia T 446/00 [3.3]).

Although not part of the present appeal proceedings, the fact that a divisional application is still pending before the first instance speaks also against the [patent proprietor’s] argument (cf. “Case Law”, 6th edition 2010, VII.E.16.5.5, page 903).

[19] In view of the complete chain of events cited above and the particular circumstances of the present case, it is the board’s conviction that not even the principle of procedural economy can assist the [patent proprietor’s] request to have its late filed auxiliary request admitted into the appeal proceedings.

First, the [patent proprietor’s] auxiliary request is not clearly and directly allowable but requires further examination as to the substantive requirements of the EPC, at least for those of A 56.

Second, the conduct of the [patent proprietor] during the OPs, in particular the filing, modification and replacement of a fairly large number of auxiliary requests in a short time, is not seen as being in accordance with a party’s obligation to take care not to act in a manner detrimental to the efficient conduct of OPs (cf. “Case Law”, 6th edition 2010, VII.E.16.5.4, page 902). This is all the more important specially in those cases, as in the present one, in which a decision taken by the board in appeal proceedings might be of relevance for pending divisional applications and for possible subsequent litigations before national courts. In these cases, the respondents should be given at least an opportunity to prepare and present their case appropriately. This was not so in the present case. Reasons of procedural economy cannot, in principle, override the actual purpose of an appeal proceedings or excuse [a patent proprietor] from complying with the basic requirements of these proceedings, such as an early filing of amendments and an efficient conduct at OPs.

[20] In view of the foregoing considerations, the state of the appeal proceedings and the complete prosecution history of the present auxiliary request, the board, in the exercise of its discretion under Article 13(1) RPBA, decides not to admit the auxiliary request into the appeal proceedings.

Should you wish to download the whole decision, just click here.

To have a look at the file wrapper, click here.

For another decision on the “last chance” argument, click here.