Friday, 11 January 2013

T 1650/08 – Oh Yes We Can

I am sorry to present yet another “admissibility of requests” decision, but there is not much exciting stuff out there right now.

This is an appeal against the revocation of the opposed patent. The decision was based on A 123; A 54 and A 56 were not discussed.

As so often, the patent proprietor filed requests one month before and also during the oral proceedings (OPs) before the Board, and as so often, the Board refused to admit these requests.

The decision is interesting because there was a debate on the grounds the Board had to base its prima facie allowability review on.

[1] The main request and auxiliary request I were filed one month before OPs, and auxiliary requests II and III were filed during the OPs.

[2] According to Article 13(1) RPBA, any amendment to a party’s case after it has filed its grounds of appeal or reply may be admitted and considered at the Board’s discretion. The discretion shall be exercised inter alia in view of the complexity of the new subject matter, the current state of the proceedings and the need for procedural economy.

[3] The board will therefore examine whether the late filed requests are in line with these principles.

[4] With regard to the procedural economy, the admission of new requests at a very late stage of the proceedings, i.e. shortly before or on the day of OPs, is only in keeping with this principle if the requests are not unsuitable from the outset to overcome the objections as to the allowability of the claims. This means that there must be no doubt that the late-filed requests meet the formal requirements and that they constitute a promising attempt to counter all outstanding objections (cf. Case Law, 6th edition, VII.E.16.4.1, and VII.E.16.5.4; cf. e.g. also T 33/07; T 321/07; T 1168/08; T 1634/09).

The board will therefore not limit its preliminary assessment to issues under A 123(2) and A 123(3) but will include issues under A 54 and A 56.

[5] The [patent proprietor] argued that the board, when exercising its discretion, could only take into account issues which were dealt with in the decision under appeal, i.e. only issues under A 123(2) and A 123(3). Based on decision T 384/91 in connection with decision G 1/93, and on decision G 9/91, it reasoned as follows:

In decision G 1/93, the Enlarged Board of Appeal (EBA) had defined the conditions under which a patent could be maintained unamended despite it containing subject matter extending beyond the content of the application as filed. Based on G 1/93 [13], the competent board in decision T 384/91 concluded that the assessment whether the exception provided for in the EBA’s decision applies in a particular case should only rely on the technical relationship of the added feature with the content of the application as originally filed. The assessment could not depend on considerations of the prior art.

The same conclusion could be derived from decision G 9/91 [18], where the purpose of an appeal procedure was described as mainly giving a losing party the possibility of challenging the decision of the opposition division (OD) on its merits, and where it was explicitly stated that it would not be in conformity with this purpose to consider grounds of opposition on which the decision of the OD had not been based.

Since the decision under appeal dealt exclusively with issues under A 123(2) and A 123(3), the board was barred from including considerations of other grounds of opposition when assessing the admissibility of [patent proprietor’s] requests.

[6] The board is not convinced by these arguments.

Decision G 1/93 addressed the specific problem of the relationship between the provisions of A 123(2) and (3), and analysed the conditions under which it was possible to maintain a granted claim containing subject matter extending beyond the content of the application as filed. When discussing the relationship between these provisions (cf. points [5] and [13] of the reasons), the EBA stated that both were mutually independent of each other and of equal weight, and that there was no room for an interpretation of this relationship depending on the facts of the individual case, i.e. depending on prior art considerations.

In the present case, the board is not examining [patent proprietor’s] argument that the last half sentence of feature (d) of claim 1 as granted represented a limiting feature according to G 1/93 [headnote 2]. The question addressed by the board is that of the admissibility of late filed requests, and in this respect, decision G 1/93 is silent.

Decision G 9/91 was concerned with the question if the power of an OD or a board of appeal to examine and decide on the maintenance of a patent depended on the extent to which the patent was opposed in the notice of opposition. Regarding the purpose of appeal proceedings as mainly giving the losing party an opportunity to challenge a decision from an OD, and in view of the judicial nature of appeal proceedings, the EBA decided that it would in principle not be justified to introduce fresh grounds for opposition at the appeal stage (cf. Reasons, point [18]).

In the present case, novelty and inventive step were grounds of opposition from the beginning of the procedure, and the board is assessing a different question, i.e. the admissibility of late filed requests. The conclusions drawn in decision G 9/91 do not relate to the present case.

Thus, there is no legal reason preventing the board, when exercising its discretion under Article 13(1) RPBA, from taking into consideration the issues of novelty and inventive step on which the opposition was based from the very beginning.

[7] When deciding on the admissibility of late filed requests, the board does not consider it as a necessary prerequisite that the proposed amendments overcome all outstanding objections with certainty but that they result at least in an arguable case. The board sees no reason in admitting amendments which would result in clearly non-allowable requests as this would only lead to unnecessary delays.

[8] The [patent proprietor] submitted that the late filed requests represented promising attempts to overcome all outstanding issues.

[9] In its communication accompanying the summons to OPs, the board had expressed its preliminary opinion that the last half sentence of part (d) of claim 1 referred to a property of a packaging vector but did not further specify the technical properties of the claimed retrovirus. In view of this preliminary opinion, the [patent proprietor] argued that the last half sentence of part (d) should be simply ignored when determining whether the main request and auxiliary request II met the requirements of A 123(2). For the same reason, the deletion of the last half sentence of part (d) in auxiliary requests I and III should have no consequences under the provisions of A 123(3).

The board agrees that the proposed amendments to part (d) of claim 1 could be regarded as a promising attempt as far as issues under A 123(2) and A 123(3) EPC are concerned. It remains however to be established if this also applies to the objections under A 54 and A 56.

[10] The subject matter of claim 1 of the main request is a replication defective pseudotyped HIV-based retrovirus. It comprises a HIV GAG protein (feature (a)), a HIV POL protein (feature (b)), an ENV protein selected from the group of ENV proteins listed in feature (c), among others from a Moloney Murine Leukemia virus, and a retroviral genome comprising a heterologous nucleic acid linked to a regulatory nucleic acid sequence, at least one HIV cis-acting nucleic acid sequence necessary for reverse transcription and integration, and a HIV retroviral packaging site comprising a 5’ splice donor sequence and a psi sequence (feature (d)).

[11] From the beginning of the opposition procedures, the [opponent] had argued that the claimed retrovirus lacked novelty over document D10.

[12] Document D10 discloses the production of a replication deficient retroviral HIV based retrovirus comprising a HIV GAG, POL and ENV protein (features (a) to (c)) and a retroviral genome comprising cis-acting HIV sequences necessary for reverse transcription and integration, and a packaging sequence including the 5’ splice donor sequence and a psi sequence (feature (d)) (for the retroviral genome cf. Figure 2, vector “HVB(SL3NEO)”, and page 16; for features (a) to (c) cf. Figure 2, vectors “HXB?P1?env” and “pSVIIIenv3-2”, and e.g. Table II).

The retrovirus disclosed in the examples of document D10 comprises HIV ENV and thus differs from the retrovirus of claim 1 of the main request by the nature of the ENV protein. The disclosure of document D10 is however not limited to the examples. It refers inter alia to pseudotyping as a way to increase the virus host range (cf. page 30: “in light of recent observations demonstrating that HIV can be pseudotyped with the envelope glycoproteins of other viruses, increasing the host range of these vectors is feasible”). In the same context, it also contains an explicit reference to a particular document describing the pseudotyping of a HIV virus (cf. page 13: “HIV can be pseudotyped with the envelope glycoproteins of other viruses. [(Lusso, P. et al., Science 247:848-851 (1990)]. Consequently one can prepare a vector containing a sufficient number of nucleotides to correspond to a functional env gene from a different retrovirus”).

The document referred to, Lusso et al., is document D11 in the current proceedings. It discloses a HIV vector pseudotyped with an ENV protein from an amphotrophic Murine Leukemia virus (MLV) (cf. feature (c) of claim 1).

[13] The [opponent] argued that document D10 directly affected the novelty of claim 1 because it contained an explicit reference to document D11.

[14] The [patent proprietor] submitted that document D10 did not affect novelty of any of the requests because it merely contained a reference to a further publication without disclosing any of the specific heterologous ENV proteins defined in part (c) of claim 1.

[15] The board agrees with the [patent proprietor] that the proposed amendments to claim 1 represent at least an arguable case to overcome the novelty objections but it disagrees with the [patent proprietor] with regard to inventive step.

[16] Document D10 suggests pseudotyping in general terms as a solution if one wishes to increase the host range of the disclosed retroviruses (cf. point [12] above), and, by reference to document D11, directly points to one of the replication defective pseudotyped HIV based retroviruses as defined in claim 1.

Therefore, the board is convinced that claim 1 of the main request is clearly unallowable under the provisions of A 56.

[17] The proposed amendments in claim 1 of auxiliary requests I to III concern the deletion of the last half sentence of part (d) (auxiliary requests I and III) and the addition of the feature “and wherein said HIV-based retrovirus is produced by a suitable packaging host cell” (auxiliary requests II and III), respectively. As explained above (cf. point [9)], the last half sentence of part (d) specifies properties of a packaging virus without affecting the technical features defining the claimed replication defective retrovirus, and removal of this feature does not alter the technical specification of the claimed retrovirus. The same is true for the addition of the new process feature to part (d). It does not alter the definition of the claimed retrovirus. Since the technical features of the replication defective recombinant retroviruses of the main request and of auxiliary requests I to III are identical, the conclusions reached in respect of the main request equally apply to auxiliary requests I to III.

[18] For these reasons the board decided not to admit any of the requests into the proceedings.

NB: This decision was reported on Le blog du droit européen des brevets (here)

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

The file wrapper can be found here.