Friday, 1 February 2013

T 1705/11 – Not Neutral

Both the patent proprietor and the opponent filed an appeal after the Opposition Division (OD) had maintained the patent – which was based on a divisional application – in amended form. The patent proprietor later withdrew its appeal.

Claim 1 on file was directed at a stable enzyme composition comprising a thermostable nucleic acid polymerase enzyme in a buffer comprising one or more non-ionic polymeric detergents.

When dealing with novelty of the claimed subject-matter, the Board had to decide on document N2. The opponent had filed a declaration (N28) by the CEO of the company having issued N2 according to which N2 had been disclosed at a Conference in 1987.

The patent proprietor had objected to this declaration in the following terms:

The Board endorsed this argument:

[16] Document N2 is a product information data sheet of Molecular Biology Resources, Inc. (MBR) which discloses the thermostable DNA polymerase of Thermus aquaticus (Taq polymerase) in a storage buffer containing a non-ionic polymeric detergent (Tween 20). The [opponent] argues that document N2 was distributed on 8 June 1987 at the Conference of the American Society of Biological Chemists (ASBC). In the decision under appeal, the OD considered the following three questions, namely i) had N2 been made available at the meeting by distribution?, ii) was there a prior use?, and iii) was it, if document N2 was indeed available, a non-prejudicial disclosure in the sense of A 55(1)(a)? […]. After a thorough consideration, the OD decided all three questions in the patentee’s favour and it was concluded that document N2 did not belong to the state of the art […].

[17] In its grounds of appeal, the [opponent] filed document N28, a declaration of the President and CEO of MBR, Dr Peter J. Smyczek, in which he stated that document N2 was distributed and made available to everyone freely at the ASBC Conference held on 7-11 June 1987. In the communication under Article 15(1) RPBA, the board referred to the criteria established by the Boards of Appeal for assessing oral and public disclosures (cf. “Case Law of the Boards of Appeal of the EPO”, 6th edition 2010, I.C.1.8, page 69, in particular I.C.1.8.3, page 73) and questioned whether these criteria were fulfilled by document N28. No further comments in this respect were made by the [opponent] in its reply to this communication and at the oral proceedings (OPs) before the board. Instead, the [opponent] referred to its written submissions. Without entering into thorough considerations about the admissibility of document N28 into the appeal proceedings, suffice it to say that the deficiencies outlined in the board’s communication have not been overcome. In particular, as pointed out by the [patent proprietor], the president of MBR cannot be seen as a neutral attendee of that Conference. Moreover, there is no evidence on file showing that the president of MBR actually attended the Conference and supervised the actual distribution of the data sheet or, as mentioned in the decision under appeal, who were the actual recipients of this data sheet. In view of these factors, document N28 is considered not to be of further relevance. As stated in the communication under Article 15(1) RPBA, there is no reason to deviate from the findings of the OD as regards the public availability and the disclosure of document N2.

The Board found claim 1 to be novel. When discussing inventive step, the Board had to decide on the admissibility of documents N33 and N39. N33 was background art for the parent application and N 39 was an MSc thesis:

[21] Document N33 was filed with [opponent’s] Grounds of appeal and identified therein as a “new” document […]. This document was mentioned as general background prior art with reference to the earlier parent patent in the Notice of opposition, where no particular passage thereof was referred to and where it was not elaborated that it was of relevance in the formulation of the problem-solution approach […]. The document was also cited in the context of a hypothetical claim directed to a PCR kit composition […]. Document N33 was not physically filed nor incorporated in the list of documents presented as evidence for the opposition. The document was neither cited in the communication of the OD attached to the summons to OPs nor in the Minutes of these OPs or in the decision under appeal.

[22] The [opponent] justified the late filing of document N33 in its statement of the Grounds of appeal by arguing that its relevance became only evident after the filing of an Auxiliary Request with the purpose-related feature. However, […] a narrow interpretation of the DNA polymerase activity was already an issue at the beginning of the opposition proceedings. Already at that point in time, the [opponent] was free to formulate a problem-solution approach based on document N33 and, this was certainly true, after the filing of the Auxiliary Request containing the purpose-related feature, one month before the OPs at first instance. Document N33 was known to both parties as can be seen from its citation in the [opponent’s] Notice of opposition and from the references in the patent-in-suit […].

[23] In the light of these considerations, the board takes the view that document N33 could have been filed in the first instance proceedings. To admit it now into the appeal proceedings, would amount to the opening of a fresh case which is contrary to the purpose of appeal proceedings (cf. “Case Law”, supra, VII.E.1, page 821). It is also to be noted that the patent-in-suit is a divisional application of an earlier patent application which, upon grant, was opposed and the decision of the OD subsequently appealed. This appeal led to a decision by this board in a different composition (cf. decision T 1080/01 cited in [opponent’s] Notice of opposition). Thus, the patent resulting from the parent application underwent a full examination by both the first and appeal instances of the EPO. Therefore, the board in exercising its discretion pursuant to Article 12(4) RPBA decides not to admit document N33 into the appeal proceedings.

[24] Document N39 was filed by the [opponent] in reply to the board’s communication under Article 15(1) RPBA and thus, it represents an amendment to the [opponent’s] case in the sense of Article 13(1) RPBA. The document was cited in the [opponent’s] Notice of opposition by quoting expressis verbis the decision of the OD on inventive step of the earlier parent patent […]. Document N39 was not physically filed nor incorporated in the list of documents presented as evidence for the opposition. Apart from this reference, the [opponent’s] attack under A 56 in the Notice of opposition was essentially based on document N1 as closest prior art document […]. In harmony with this approach, the patentee’s reply on 26 June 2009, although mentioning document N39, referred to and dealt in detail only with document N1 as the closest prior art document. Likewise, the communication of the OD attached to the summons to OPs referred only to document N1. This is also evident from the decision under appeal and in the Minutes, wherein only document N1 is cited as the closest prior art document […].

[25] The reasons given by the [opponent] for the introduction of document N39 at this stage of the appeal proceedings are basically those given for the admission of document N33 […]. In addition, document N39 was also known to the parties from the beginning of the opposition proceedings. The board decided not to admit document N33 and sees no reason not to reach the same decision as regards document N39. Thus, in exercising its discretion pursuant to Article 13(1) RPBA, the board decides not to admit document N39 into the appeal proceedings.

[26] It is worth noting here that, according to the established case law, the procedure concerning a divisional application is completely independent from that of the parent application, the former being examined entirely separately from the latter (cf. “Case Law”, supra, IV.1.1, page 375 and IV.7.1, page 391). Facts, evidence and requests or submissions made or filed in the parent procedure are not automatically part of the divisional procedure. A general citation or a mere reference to facts and/or evidence, such as to prior art documents, filed in the parent procedure but not physically filed or incorporated into the divisional application procedure does not constitute a reservoir upon which a party may draw at its convenience and at any time in the divisional application procedure.

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

The file wrapper can be found here.