Interested in how the Boards apply Article 12(4) RPBA? If so, this decision is for you.
In this case the Opposition Division (OD) decided in its interlocutory decision of March 27, 2007, to maintain the patent under consideration in amended form. The opponent filed an appeal against this decision. Opponent 1 filed an appeal against this decision.
There were interventions pursuant to A 105 on January 17, 2008, and January 23, 2009.
On February 3, 2009, the Board set aside the decision and remitted the case to the OD because the interventions had created a fresh case (decision T 1469/07).
There was still another intervention on February 27, 2009.
In its decision taken on March 17, 2010, the OD revoked the patent. According to the OD, none of the requests met the requirements of A 84, because the feature “wherein the sustained release formulation releases the active ingredient over more than 3 hours” was not clear. Firstly, it was not clear whether the release rate referred to in vitro or to in vivo release. Secondly, the description did not provide any standard test for measuring it and finally, the release data provided in the patent specification were not sufficient for characterising the sustained release.
The patent proprietors filed an appeal against this decision. They filed a main request and auxiliary requests I to V together with the statement of the grounds of appeal.
Claim 1 of the main request read:
1. A sustained release pharmaceutical composition comprising a water soluble salt of fluvastatin as active ingredient and being selected from the group consisting of matrix formulations, diffusion-controlled membrane coated formulations and combinations thereof, wherein the sustained release formulation releases the active ingredient over more than 3 hours. (my emphasis)
Claim 1 of auxiliary request II did not contain this 3-hours feature any more:
1. A sustained release pharmaceutical composition comprising a water soluble salt of fluvastatin as active ingredient and being selected from the group consisting of matrix formulations, diffusion-controlled membrane coated formulations and combinations thereof.
The respondents pointed out that auxiliary request II was not admissible in the light of decisions T 1067/08 and T 23/10, which fully applied to the present case because requests omitting the the 3-hour feature had been withdrawn during the opposition proceedings. Therefore, the patent proprietors should be precluded to reintroduce such claims under Article 12(4) RPBA. The appellants should not have withdrawn the requests and thereby prevented a discussion on the merits if they had intended to pursue them. Moreover, the appellants’ submission was argued not to be allowable in view of reformatio in peius.
In what follows the Board dealt with this admissibility objection:
[2.1] Pursuant to Article 12(4) RPBA an appeal board can hold inadmissible facts, evidence or requests that could have been presented in the opposition proceedings. The boards of appeal thus retain discretion, as a review instance, to refuse new material including requests (claim sets) not submitted during opposition proceedings (T 240/04 [16.2], T 1705/07 [8.4]). The request at issue is one which was before the OD, but which was withdrawn so that no decision was taken thereon. In the board’s view, Article 12(4) RPBA equally confers discretionary powers to hold inadmissible requests that were filed and subsequently withdrawn in the first instance proceedings, since such a course of events shows that these requests could have been presented in the first instance proceedings. The discretionary power under Article 12(4) RPBA has to be exercised appropriately, which requires the appeal board to consider and weigh up the relevant factors having regard to the particular circumstances of each case.
[2.2] It is clear from the minutes of the oral proceedings (OPs) before the OD of 17 March 2010 that the appellants, following the discussion on the main request, withdrew auxiliary requests I to III filed on 25 November 2009, in which the wording “wherein the sustained release formulation releases the active ingredient over more than 3 hours” was omitted. The OD had beforehand informed the parties that it considered the main request to meet the requirements of R 80 […] and A 123 […], whereas the words “wherein the sustained release formulation releases the active ingredient over more than 3 hours” did not satisfy the requirement of A 84 […].
In view of this finding, the withdrawal of those claim requests, in which the objected wording was omitted, appears – as the respondents argue – to be made with the intention of preventing a decision on novelty and inventive step. However, the appellants adverted to the OD’s decision of 20 August 2007 which was later set aside by decision T 1469/07. According to this decision, the release time was critical for establishing novelty vis-à-vis document D13 […]. Bearing in mind the OD’s opinion on novelty, the [patent proprietor’s] regarded it pointless to discuss auxiliary requests I to III filed on 25 November 2009, since it was predictable that the OD would refuse these requests for lack of novelty. For procedural economy, the appellants did not maintain their request that would set back the discussions to the state of the proceedings before the OD’s decision of 20 August 2007.
[2.3] While the auxiliary requests I to III filed on 25 November 2009 may not have been withdrawn with the intention of delaying the opposition and appeal proceedings by seeking remittal upon introduction of these requests into appeal proceedings, the inevitable result of the withdrawal of the requests was that a decision thereon was avoided. As soon as those requests had been withdrawn, they were no longer the subject of a reasoned decision. However, the purpose of appeal proceedings is to review what has been decided at first instance and not to review what has not been decided (T 390/07 [2], also considering circumstances under which a request withdrawn at first instance may be admitted on appeal).
As has been repeatedly stated in the case law, it is neither 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.
Thus, if the appellants had wanted to preserve their right to have any of auxiliary requests I to III filed on 25 November 2009 considered by a board of appeal, they should have maintained them, all the more so in the light of the OD’s opinion on the main request. Procedural economy, which in the present circumstances consists in the time it would have taken at OPs to consider auxiliary requests I to III and to reach a decision thereon, and in the time for the OD to provide written reasons, is not a sufficient justification for the appellants’ way to proceed.
Moreover, it is incumbent on both the EPO and users of the European patent system who are parties to proceedings before it to act in good faith (G 2/97 [4.2]). A proprietor who files auxiliary requests by which it delimits the framework of the opposition proceedings and then deliberately withdraws them in order to avoid any adverse decision being reached infringes this general principle by seeking to introduce these requests into appeal proceedings.
In conclusion, the board, having regard to the facts and arguments presented to it, decided to make use of its discretionary powers according to Article 12(4) RPBA not to admit auxiliary request II, in which the words “wherein the sustained release formulation releases the active ingredient over more than 3 hours” had been omitted, into the appeal proceedings.
[2.4] Although the following considerations are not relevant for the board’s decision not to admit auxiliary request II into the proceedings, the board wishes to take a stance with regard to additional arguments submitted in this context.
[Opponent 1] argued that the admission of auxiliary request II would be contrary to the interdiction of reformatio in peius, i.e. the prohibition of a possible worse outcome of appeal proceedings for the (sole) appellant as compared to the decision under appeal. The legal situation in this regard has been elucidated in the decisions of the Enlarged Board (EBA) G 9/92 and G 4/93. The implications are limited to cases in which an interlocutory decision on the maintenance of a patent in amended form is appealed only by one of the parties. Since the present appeal lies from the OD’s decision to revoke the patent, the interdiction of reformatio in peius cannot have a bearing on the appeal and all the more on the question of admission of auxiliary request II.
[Opponents 2 to 4] relied on the decisions T 1067/08 and T 23/10 refusing late filed claim requests pursuant to Article 12(4) RPBA. The appellants contested the pertinence of these decisions in view of the different factual circumstances. The board notes in this respect that the exercise of the discretionary power under Article 12(4) RPBA requires the appeal board to have regard to the particular circumstances of each case. The facts of the individual case will thus clearly affect any decision on the admission of late filed requests. Therefore, the decision invoked by the respondents cannot foreclose the weighing of the relevant factors having regard to the particular circumstances of each case.
Nevertheless, as the EBA pointed out in its decision R 11/08 [11], the usefulness of case-law is not confined to similar or identical facts; rather it lies in the legal principles or guidance which, whether the facts are similar or not, can be extracted from earlier cases.
In this respect the present decision conforms with the legal principle stated in the cited decisions that there is no right of the patent proprietor, be it pursuant to A 133(1) or A 113(2), to have claim requests admitted at any stage of opposition and opposition appeal proceedings.
Thus, the admission of new claim requests remains a matter of discretion which may or may not be exercised in a party’s favour on the basis of the facts of the individual case. This legal principle has also been confirmed by the EBA (R 10/09 [2.2]; R 11/11 [9-10]).
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