Wednesday, 13 March 2013

T 947/09 – Late Objections

In case you had doubts – Article 12(4) RPBA also applies to late filed objections, as the present decision illustrates

[1] In the “Notice of opposition”, the opponent/appellant raised an objection under A 100(b) concerning the plasmid shown in Figure 2B and described in Example 2 of the patent-in-suit. A further objection concerned the subject-matter of claim 6 ([…]. Both objections were addressed by the opposition division (OD) in its communication annexed to the summons to oral proceedings (OPs) […]. In its reply to this communication, the opponent/appellant referred only to A 100(a) EPC/A 56 EPC and no comments were made on A 100(b). According to the “Minutes of the OPs before the OD” (hereinafter the “Minutes”), the parties had no comments under A 100(b) in addition to those filed in writing […]. As regards A 100(b), the OD in the decision under appeal gave only reasons for the opponent/appellant’s objections raised in the “Notice of opposition”. The decision of the OD on these objections was not contested in the appellant’s grounds of appeal and thus, it is not part of the present appeal proceedings.

[2] In the statement of grounds of appeal, the appellant raised a new objection under A 100(b) based on an alleged lack of guidance of the patent-in-suit for performing the invention over the whole range claimed […]. Although this objection is new under A 100(b), it is related to an objection originally raised under A 100(a)/A 56, namely that it was not plausible that the technical problem had been solved over the entire breadth of the claims […]. No reasons were given for justifying the introduction of this objection in appeal proceedings under A 100(b) and/or for explaining why it could not have been submitted in an earlier stage of the proceedings.

[3] In its communication pursuant to Article 15(1) RPBA, the board – with reference to the function of an appeal proceedings as established in the case law (cf. “Case Law of the Boards of Appeal of the EPO”, 6th edition 2010, VII.E.1, page 821) – questioned whether the appellant’s objection was admissible under A 100(b) and referred to the discretion conferred on the board by Article 12(4) RPBA. In reply to this communication, the appellant maintained the new objection under A 100(b) and referred to the case law in support of its admissibility. At the OPs before the board, the appellant referred to its written submissions and made no further submissions on this issue.

[4] The subject-matter of claim 1 is directed to a product, i.e. a nucleic acid molecule, defined by several structural elements which are either present or absent […]. The claim does not mention a technical effect or functional feature of said nucleic acid molecule. The board fails to see any technical problem or difficulty for a skilled person to achieve the defined nucleic acid molecule and there is no evidence on file to the contrary. According to decision G 1/03 [2.5.2] “... if the effect is not expressed in a claim but is part of the problem to be solved, there is a problem of inventive step ...”. Thus, as regards the subject-matter of claim 1, appellant’s objection is relevant only under the requirements of A 100(a)/A 56.

[5] The subject-matter of claim 13 is directed to a method of obtaining non-infectious, non-replicating, immunogenic HIV-like particles. It is required that the constitutive expression of the nucleic acid molecule of any of claims 1 to 10 (comprised in an expression vector of claims 11 or 12) in mammalian cells results in a stable production of these non-infectious, non-replicating, immunogenic HIV-like particles […].

Thus, in line with decision G 1/03 [2.5.2] which states that “... (i)f an effect is expressed in a claim, there is lack of sufficiency of disclosure ...”, the appellant’s objection as regards the subject-matter of claim 13 could be relevant under the requirements of A 100(b). However, in view of the late filing of this objection […] and of the prosecution history of the present case and, more importantly, of this particular objection during the first instance proceedings, the board, exercising its discretion under Article 12(4) RPBA, refrains to deal with this objection here and finds it more appropriate to consider it under the requirements of A 100(a)/A 56 […].

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