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This is an appeal against the revocation of the opposed patent by the Opposition Division (OD).
The decision contains an interesting reasoning on the admissibility of the main request:
[1] The main request was filed during oral proceedings (OPs). It was originally filed as auxiliary request VI with the grounds of appeal and later renumbered as auxiliary request II […]. After deletion of dependent claim 4 which comprised an embodiment no longer falling within the scope of amended claim 1, it became the main request.
[2] The [patent proprietor] and both [opponents] present at the OPs confirmed that the request […] had been submitted during OPs before the OD but was not admitted into the procedure. Although this is not mentioned in the minutes of the OPs, the board sees no reason to challenge this statement.
[3] Thus, the question arises whether the request should be admitted in appeal proceedings under the provisions of Article 12(4) RPBA which give the board the power to hold inadmissible requests which were not admitted in the first instance proceedings.
[4] The admission of late filed requests in opposition proceedings is at the discretion of the OD (A 114(2) , and the [patent proprietor] submitted that the OD had not exercised its discretion properly.
[5] It is established jurisprudence that “[a] board of appeal should only overrule the way in which a department of first instance has exercised its discretion if the board concludes it has done so according to the wrong principles, or without taking into account the right principles, or in an unreasonable way” (Case law, 6th edition, VII.E.6.6).
[6] In the present case however, neither the minutes of the OPs before the OD nor the decision under appeal make any mention of such a request, and the board finds itself in a situation where, due to the absence of any evidence why the OD did not admit the respective request, it is not in a position to assess the basis on which the OD had exercised its discretion.
Under these circumstances, the board, exercising its discretion under Article 12(4) RPBA, decided to admit the main request.
The Board also discussed compliance with A 123(2) of claim 1 of the main request, which read:
1. A process for making a vaccine for administration to humans or animals comprising:(a) replication of influenza viruses in cell culture, in which MDCK 33016 cells (DSM ACC 2219) are cultured in cell culture in suspension in serum-free medium, the cells are infected with influenza viruses and after infection are cultured at a temperature in the range from 30ºC to 36ºC for virus replication, wherein a protease is added to the cultured cells before or during infection with influenza viruses;(b) formulation of the replicated influenza viruses to give the vaccine.
[9] The [opponents] objected to the combination of features in part (a) of claim 1. They argued that the combination of only two of the three points in time specified in original claim 11 with the features of original claim 1 violated the provisions of A 123(2).
[10] Claim 11 as originally filed read:
“11. The process as claimed in one of claims 1 to 10, in which a protease is added to the cultured cells before, during or after infection with influenza viruses.”
In the [opponents’] view, claim 11 stated in essence that the point in time of adding the protease did not matter, and the combination of only two out of three possible points in time of adding the protease with the features of claim 1 represented a selection which was not derivable from the application as filed and which resulted in the addition of technical information.
[11] In point 1.2.1 of its decision, the OD stated that “The presence of an alleged technical effect resulting from such a selection has no relevance when assessing A 123(2)”.
The board does not agree with this statement.
Any amendment to the parts of a European patent application or of a European patent is subject to the mandatory prohibition on extension laid down in A 123(2) and can therefore, irrespective of the context of the amendment made, only be made within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of the application documents as filed (cf. G 2/10 [4.3, 1st paragraph]). The test for an amendment to a claim, also for an amendment by limitation, is that after the amendment the skilled person may not be presented with new technical information (cf. G 2/10 [4.5.1]).
Whether an amendment of the type in question meets the requirements of A 123(2) depends therefore on the facts of the case and includes an assessment whether the amendment results in new technical effects.
[12] Regarding claim 1 of the main request, no argument has been put forward by any of the parties that the selection of two out of the three points in time for adding the protease provided any technical teaching going beyond the application as filed. Since claim 11 as filed directly referred to claim 1 and disclosed three individual points in time for adding the protease, no technical information is added by limiting present claim 1 to two out of the three points in time for adding the protease.
[13] Thus, the features of part (a) of claim 1, i.e. replicating the virus in cell culture at a temperature from 30 to 36 degrees C and adding a protease to the cultured cells before or during infection with influenza virus, are based on original claim 11 via its reference to original claim 1. Furthermore, according to the general part of the description as originally filed (page 6, lines 12 to 16), the use of cells growing in suspension, in particular in serum free medium is a preferred embodiment allowing particularly simple and efficient virus replication. The patent application as filed also discloses an MDCK derived cell line, MDCK 33016, adapted to growth in suspension in serum free medium, which is “particularly preferably used in the process according to the invention” (cf. page 5, lines 31 to 38).
[14] Dependent claims 2 to 7 are based on originally filed claims 2 and 3, and 12 to 15, and the general parts of the description, respectively (page 4, lines 33 to 36; page 7, lines 14 to 17; page 7, lines 27 to 28).
[15] The board is therefore satisfied that the requirements of A 123(2) are met.
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