T 1421/05 – No, But Yes

This decision also has an interesting passage on a point related to the res judicata doctrine.

Claim 1 of the patent as granted (priority date: February 13, 1990) read:

A single cell-edible oil characterized in that docosahexaenoic acid (DHA) makes up at least 15% of the oil by weight, preferably at least 20%, more preferably at least 30% and most preferably at least 35%.

The patent was revoked by the Opposition Division (OD) on October 12, 2000, for lack of novelty over document D4. The patent proprietor appealed (this appeal is referred to in the present decision as “the First Appeal”) and filed several requests.

Claim 1 of the first auxiliary request read:

A single cell-edible oil wherein docosahexaenoic acid (DHA) makes up at least 35% of the oil by weight, said oil being directly obtainable from a unicellular organism by hexane extraction. (my emphasis)

In its decision T 1091/00 (July 2, 2002) the Board rejected the main request but held that the introduction of the word “directly” into claim 1 of the first auxiliary request did not violate A 123 and that the claims were novel. The Board also stated that the rejection of the main request as well as the findings in relation to the first auxiliary request under A 123, A 83 and A 54 were res iudicata. It remitted the case to the OD for further prosecution.

Before the OD, opponent II argued that the claim lacked inventive step and also raised a lack of clarity (A 84) objection.

In its decision of August 4, 2005, the OD found the new main request (identical to the first auxiliary request before the Board in T 1091/00) to be allowable. The OD did not admit the clarity objection because it held that the Board in T 1091/00 had implicitly decided on clarity – otherwise it could not have taken a decision on novelty.

Opponent II filed an appeal. We have seen in the preceding post that the Board found this appeal to be admissible. The Board then deals with the objection under A 84. Is this a case of res judicata or isn’t it?

[9] Claim 1 of the patent as granted read:

“A single cell-edible oil characterized in that docosahexaenoic acid (DHA) makes up at least 5% of the oil by weight, preferably at least 208, more preferably at least 30% and most preferably at least 35%.”

[10] In the First Appeal, the main request of the proprietor, as filed during the oral proceedings (OPs), was for maintenance of the patent in amended form, whereby inter alia the oil was now defined as being “obtainable from a unicellular organism by hexane extraction” and wherein the DHA content was restricted to a value of “at least 35%”. As a first auxiliary request, also filed during the OPs, the word “directly” was introduced into Claim 1 before the term “obtainable”.

[10.1] The decision of the Board in the First Appeal […] records that the opponent contested the admissibility of the newly filed sets of claims under A 123(2), inter alia as regards the introduction of word “directly” into the first auxiliary request. As to novelty, it argued that the term “being obtainable by hexane extraction” was not a restriction on the claimed oil, so that any prior art oil containing more than 35% DHA was novelty-destroying for this claim.

[10.2] As regards the main request, the Board rejected the objections under A 123(2) and A 100(b) but held that the subject matter of Claim 1 was not novel. As regards the first auxiliary request, the Board rejected the argument under A 123(2) relating to the introduction of the word “directly”. As regards novelty, the Board observed that:

“Contrary to the main request, claim 1 is now directed to the product “directly” obtainable from a unicellular organism by hexane extraction. There is now a clear restriction to the claimed oil for the skilled person ... .”

The Board went on to hold that its subject matter was not anticipated by the cited prior art.

[10.3] The Board then had to consider the conflicting requests for remittal, i.e., the proprietor’s request that the case be remitted to the OD for further prosecution and the opponent’s request that the Board should itself examine inventive step of the auxiliary request without remitting the case […]. As to this the Board said:

“The rejection, by the Board, of the present main request and its findings in relation to the present first auxiliary request under Articles 123(2)(3), A 83 and A 54 are res judicata. […] The OD decided that claim 1 was not patentable on the grounds of lack of novelty but left out the essential issue of inventive step (A 52(1), A 56). This issue, however, forms, inter alia, the basis for the requests of the [opponents] that the patent be revoked in its entirety and must therefore be considered as an essential substantive issue in the present case.” […]

[10.4] The Board concluded that it was necessary to remit the case to the OD for further prosecution on the basis of the set of claims of the first auxiliary request. It further noted that opponent I (who had filed written submissions but who had not appeared at the appeal hearing) would “have the opportunity to give its view on the issue of inventive step which remains to be decided by the first instance.” […] On this basis, the Board set aside the decision under appeal and remitted the case to the OD for further prosecution.

[11] There were then extensive exchanges and delays before a further hearing before the OD took place. In the course of these, the [patent proprietor] filed various new requests, although always retaining the feature of “directly obtainable” in Claim 1 of the main request.

In a communication from the OD dated 5 June 2003 sent in accordance with A 101(2) EPC 1973 and R 58(1)-(3) EPC 1973, the OD recorded that its task was to decide on the issue of inventive step of the claims according to the first auxiliary request accepted by the Board of Appeal as a basis for remittal of the case and, as appropriate, to decide on the allowability of any amendments to this request as subsequently filed by the [patent proprietor].

On 24 November 2003, [opponent II] replied at length, pointing out that it was only the issue of inventive step which had to be considered by the OD, and making detailed comments on this issue, and raising objections to the further amendments which had now been made.

Then, in its letter dated 27 June 2005 [opponent II] raised for the first time the argument that the introduction of the term “directly obtainable” gave raise to a clarity objection under A 84, which it argued remained open for discussion. The argument was that it was clear from the description that an intermediate step was conducted between culture of the cells and hexane extraction and that therefore the skilled man would not know what “directly obtainable” in the claim meant.

[12] In its decision dated 5 September 2005, the OD concluded that the clarity of the claim had been considered by the Board in the First Appeal and that the issue should be regarded as having been implicitly dealt with. The OD took the view that the Board could not have taken a decision on the issue of novelty without considering the clarity of the claims […]. It added that the Board had issued an unequivocal interpretation of the claim which was binding on the Division […] and that in an any event if the Board had wished to entertain further discussion on the clarity of the wording it would have said so. The OD concluded that the clarity objection under A 84 was not open for discussion.

[13] In the present appeal, the [patent proprietor] argues that the issue of clarity is res judicata. For the reasons which follow, the Board does follow this approach although for other reasons it nevertheless accepts that [opponent II] is not entitled to raise this objection.

[13.1] A 111(2) provides that:

“If the Board of Appeal remits the case for further prosecution to the department whose decision was appealed, that department shall be bound by the ratio decidendi of the Board of Appeal, in so far as the facts are the same. …”

[13.2] The “ratio” of any decision is “the ground or the reason for making it, in other words, the point in a case which determines the outcome of the judgment.” (see T 934/91). In the First Appeal the Board expressly decided that Claim 1 of the first auxiliary request did not contravene A 123(2) and was novel over the cited prior art, but did not expressly decide that the amendments made to the granted claims did not give rise to a breach of A 84. 

The present Board has reservations about the OD’s statement that the Board in the First Appeal could not have taken a decision on the issue of novelty without considering the clarity of the claims […] because in principle a claim can be novel although unclear. As to the OD’s statement that the Board had issued an unequivocal interpretation of the claim which was binding on the Division […], the Board’s statement about the meaning of the amended claim was made only in the context of novelty, to the effect that with the introduction of the word “directly” there was now a clear restriction to the claimed oil for the skilled person, and that the wording implied that the amount of 35% of DHA must already be present in the extracted neutral lipid fraction of the unicellular organism […]. 

The Board cannot see this as an interpretation of the claim which rules out the particular clarity argument put forward by [opponent II]. Finally, the OD’s statement that if the Board had wished to entertain further discussion on the clarity of the wording it would have said sol while understandable, is not really in point.

[13.3] However, in the present Board’s view these arguments on res judicata do not take into account a wider, more general point. As is generally well known, it is the practice and indeed the obligation of the Boards of Appeal when amended claims are filed during appeal proceedings to examine the claims ex officio for forma1 compliance with the EPC (see G 9/91 [19]) and at the same time also to give the opponent the opportunity to make its own objections on these grounds. Such objections include both objections under A 123(2) and A 123(3) and under A 84. If and when any such objections are cleared away, the claims are then ready to be examined for novelty and/or inventive step, as the case may be, either directly by the Board or by the OD after remittal of the case.

[13.4] Thus in T 952/99 [1.3], cited by the [patent proprietor], the Board said this of the practice of the Boards in the past:

“In particular, the Boards of appeal allowed amended or auxiliary requests during the appeal procedure provided such requests were bona fide attempts to overcome objections raised and furthermore were clearly allowable, i.e. it was immediately clear that the requirements of A 123(2) and A 123(3), A 84 and preferably A 54 were met (T 840/93, [3.2.1]).”

And in T 301/87 [3.8] the Board said:

“... when amendments are made to a patent during an opposition, A 102(3) requires consideration by either instance as to whether the amendments introduce any contravention of any requirement of the Convention, including A 84 …”

[13.5] This is clearly what took place in the First Appeal. As it happened, no objection was raised by the Board or the opponent […] under A 84. The present Board can only conclude that this was because no one considered that the claims were unclear. The objections under A 123(2) and A 83 then having been cleared away, and the claims having been found to be novel over the cited prior art, the case was ready for a decision on inventive step. This was abundantly clear to everyone, not least [opponent II], who in fact wanted the Board to decide this issue there and then, and who then, after the case had been remitted, made its position clear that inventive step was the only remaining live issue.

[13.6] In T 446/00 the Board identified two types of behaviour as being abuses, namely

(a) not to comply with a procedural direction of the Board requiring a party to take a certain step or steps and

(b) for a party to adopt an unequivocal position on an issue and subsequently to depart from that position without explanation.

The latter type of behaviour was held particularly capable of being an abuse in inter partes proceedings, in which the other party is entitled to rely on that position as part of the case it has to meet. At the same time the Board made it clear that these types of behaviour did not form an exhaustive list of procedural abuses.

T 446/00 was later referred to in T 762/07, as follows:

“[5] [Opponent II] referred to T 446/00 of 3 July 2003 in which a patentee specifically stated, in answer to a challenge from the opponent, that it would not rely on a certain claim and then later re-introduced that claim without explanation. That was held to be an abuse of procedure […] . In the present case there was no such specific retraction, but the effect of three years silence broken only at the very last possible opportunity must be viewed as having much the same effect. In T 1449/03 (sic) [2.8-9], a patentee’s departure for the first time at OPs from a position previously and persistently held was not allowed inter alia because the opponent might have been lulled into a feeling of false security.

[6] In all the circumstances, the Board finds that the manner in which [the patent proprietor] 1 reverted to the claims as granted was an abuse of procedure which the OD should not have allowed.”

[13.7] A 114(2) gives the EPO the right to disregard “facts or evidence” which are not submitted in due time by the party concerned. The A 84 point raised by [opponent II] was not a new fact or new evidence, but rather a new argument based on the existing material and the law. However, in T 951/91 [5.15] the Board said:

“The discretionary power given to the departments of the EPO pursuant to A 114(2) serves to ensure that proceedings can be concluded swiftly in the interests of the parties, the general public and the EPO, and to forestall tactical abuse. Parties must take into account the possibility that late-filed material will be disregarded and do their best to submit the facts, evidence and arguments relevant to their case as early and completely as possible. If a party fails to do so without adequate excuse, and admitting the evidence would lead to an excessive delay in the proceedings, the Boards of Appeal are fully justified in refusing to admit it in exercise of the discretion provided by A 114(2).”

[13.8] In T 201/92 [3.8] the Board referred to the distinction between facts and evidence on the one hand, and arguments on the other:

“The submission of facts and evidence is different from the mere submission of arguments (see also: T 92/92). They need not be restricted insofar as they do not essentially change the procedural situation. However, in written proceedings the filing or exchange of submissions has also to be brought to an end, in particular when OPs are going to follow.”

[13.9] Further, the Departments of First Instance and Boards of Appeal have an inherent power to control proceedings before them with a view to their economical and fair disposal. As the Board said in T 201/92 [3.5]:

“… it follows clearly from the provisions of the EPC as well as from the nature and the purpose of appeal proceedings (see inter alia A 110(2), A 111, A ll4(l)(2), A ll6(l), A 117, A 122, A 125) that it is the competent Board who has the duty to direct and control the proceedings before it. Due to the fact that every legal and judicial procedure has to come to an end within due time, the principle of procedural economy is inherent in any procedural law, as it appears in the EPC inter alia in A 114(2) and also clearly follows from the Travaux Préparatoires of the EPC (see: T 951/91). That means that any party, and not least the attacking ones, has to observe a fair degree of procedural vigilance.”

[13.10] Each case will turn on its own facts, and while [opponent II] cannot be accused of precisely the above types of behaviour in the present case, the Board finds the above statements helpful.

In the present case the Board in the First Appeal had remitted the case for further prosecution in the clear and shared belief that the only remaining issue in the case was inventive step. [Opponent II] not only shared this belief at the time but subsequently affirmed it. It then later changed its position and thereby sought to change the “procedural situation” (see the citation from T 201/92, above). It did not give an explanation for doing so although it is a reasonable inference that it was because, with a change of representative, the new point had only just been thought of.

[13.11] In these circumstances the Board considers that it would not have been in accordance with normal procedural efficiency and principles of fairness to have allowed [opponent II] to re-open questions relating to the formal allowability of the claim and attempt to raise a new issue that it had had the opportunity to raise and which it should have raised at an earlier stage of the proceedings, and in doing so to resile from its previous position. To allow it to do so would not have been fair on the [patent proprietor] and could have led to further delay and increased cost. This was particularly so given that the Board in the First Appeal had examined the amended claim for formal compliance with the EPC and it had not occurred to the Board that there might be a problem with A 84. The OD would therefore have been entitled not to allow this argument to be raised. It does not matter whether one terms such procedural manoeuvring an abuse of process or not, the result is the same.

[13.12] For the same reason the Board did not allow this issue to be raised in the appeal proceedings.

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