In this case the opponent filed an appeal after his opposition had been rejected by the Opposition Division (OD).
The relevant claims of the patent were directed at a purified or isolated polypeptide capable of desaturating a fatty acid molecule from the carboxyl end of the fatty acid.
In his statement of grounds of appeal, the opponent contested the findings of the OD concerning A 100(b) and A 100(a) as regards inventive step. According to him, claim 1 encompassed polypeptides that did not possess the activity of desaturation and, therefore, did not solve the technical problem.
The Board found that the ground for opposition under A 100(b) did not prejudice the maintenance of the patent as granted. Moreover, it pointed out that the claims on file contained a functional feature limiting it to polypeptides that were capable of desaturating, which made the opponent’s argument irrelevant.
During oral proceedings (OPs) before the Board, held in the absence of the patent proprietors, the opponent argued that the solution to the problem was obvious.
The Board refused to discuss this issue:
[23] The findings of the examining division in examination proceedings regarding the non-obviousness of the claimed subject-matter were not contested in the opponent’s notice of opposition, nor did the OD consider that there was any reason to examine them of its own motion. Accordingly, the decision under appeal is silent on this issue. This issue was not raised in the appellant’s grounds of appeal which, as regards A 56, contested, only and exclusively, the broad scope of the claims.
[24] Indeed, it was only in the board’s communication pursuant to Article 15(1) RPBA that the board, when discussing the issues under A 56, drew the attention of the parties to the examination proceedings and noted that “none of the parties in the present appeal proceedings has explicitly referred to these specific arguments … or to the particular documents introduced into the examination proceedings to support them”. The board further pointed out the relationship between sufficiency of disclosure and inventive step and to the fact that the “same criteria” had to be applied for assessing both the disclosure content of the patent-in-suit and that of the prior art documents.
[25] In reply to this communication, the [patent proprietors] vehemently protested against a revision of the examination proceedings. With reference to decision G 9/91, they stated that
“none of those facts, evidence and arguments have been put into the present proceedings, since they were, and are, irrelevant to the parameters of the opposition established by the parties to this opposition”.
[26] In its reply, the appellant argued that “making an argument of lack of inventive step of the claims based on the teaching of D1 is not a new ground, and this does not contravene the procedural requirements of the EPC” because document “D1 has since the beginning of these proceedings always been considered as the closest prior art by the opponent”.
[27] Apart from this statement of the appellant, no other submissions were made in appeal and in opposition proceedings on the obviousness – or lack thereof – of the claimed subject-matter. It was only at the OPs that the appellant requested the board to have the opportunity to present its arguments on this issue.
[28] This request was not allowed by the board for the following reasons:
[28.1] According to Article 12(2) RPBA, the statement of grounds of appeal shall contain a party’s complete case and specify expressly all the facts, arguments and evidence relied on. Article 13(1) RPBA states that any amendment to a party’s case after it has filed its grounds of appeal may be admitted and considered at the board’s discretion.
In the present case, the appellant’s statement of grounds of appeal did not include any argument regarding the obviousness of the claimed subject-matter. Hence, the introduction of this new argument at OPs would represent an amendment to the appellant’s case. It is thus at the board’s discretion to admit and consider it.
[28.2] Article 13(1) RPBA states that this discretion shall be exercised in view of, inter alia, the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy.
In the present case, the appellant failed to submit the new argument at an early stage of the appeal proceedings. Even after the board’s communication in which reference was made to the examination proceedings and to the relationship between sufficiency of disclosure and inventive step (cf. point [24] supra), the appellant did not consider it necessary to introduce the new argument into the appeal proceedings but only referred, in very general terms, to its right to raise an objection for lack of inventive step based on document D1 (cf. point [26] supra). OPs in appeal are usually, if not always, the latest stage of appeal proceedings and thus, facts, arguments and evidence submitted at that stage are usually considered to be late.
[28.3] The appellant argued that the new argument at OPs was a direct reaction to the board’s reasoning when arriving at its opinion on A 100(b) in the OPs. No other reasons were provided to justify the introduction of this argument at such a late stage of the appeal proceedings.
In the light of the content of the board’s communication pursuant to Article 15(1) RPBA, the board’s reasoning when arriving at its opinion on A 100(b) in the OPs cannot be considered to have come as a surprise to the appellant. It was in this communication that the board addressed the relationship between sufficiency of disclosure and inventive step and pointed to the use of the “same criteria” for both articles (cf. point [24] supra). The appellant could, and indeed should, have considered that the board could reach the same conclusion as the OD as regards A 100(b) and, if it wished the board to consider a new argument to establish inventive step based on the use of the “same criteria” in both A 83 and A 56 and/or on the obviousness of the claimed subject-matter, it should have set out this argument, at the very latest, in its reply to the communication of the board.
[28.4] This was all the more so in view of the [patent proprietors’] protest in their reply to the board’s communication, in which they also announced their intention not to attend the OPs […]. It was in the appellant’s interest to submit all new facts, arguments and evidence as soon as possible, and certainly before the OPs, so as to avoid the possible risk of taking aback the [patent proprietors] and/or the board, and thereby compelling the board to adjourn the OPs or to disregard these new facts, arguments and/or evidence.
[28.5] Indeed, the appellant’s failure to submit the new argument in reply to the board’s communication deprived the [patent proprietors] of the opportunity to present their comments thereon and/or of the opportunity to reconsider their intention not to attend the OPs. The introduction of this new argument at OPs – in the absence of the [patent proprietors] – could well raise the question whether the board could arrive at a decision without violating the [patent proprietors’] right to be heard (A 113(1)) or, in order to avoid it, to adjourn the OPs.
[28.6] In this regard, Article 13(3) RPBA states that amendments sought to be made after OPs have been arranged shall not be admitted if they raise issues which the board or the other party cannot reasonably be expected to deal with without adjournment of the OPs. This is in line with the need for procedural economy referred to in Article 13(1) RPBA for the board to exercise its discretion (cf. point [28.2] supra).
In view of the submissions made by the parties during the written phase of the appeal proceedings, the board was convinced that the introduction at OPs of the appellant’s new argument - with or without reference to all the evidence submitted at the examination proceedings - certainly went against the need for procedural economy and it could well require the adjournment of OPs.
[28.7] Thus, the board in the exercise of its discretion did not admit the appellant’s request to have an opportunity to present its arguments on the obviousness of the claimed subject-matter at the OPs.
[29] Having considered the arguments put forward by the appellant, the board is not persuaded that the subject-matter of the claims as granted lacks inventive step within the meaning of A 56. Thus, the ground for opposition under A 100(a) does not prejudice the maintenance of the patent as granted. […]
The appeal is dismissed.
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NB : A good French summary is available on Le blog du droit européen des brevets.
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