T 1038/14 - Not deciding on attack

Key points

• In this opposition appeal, the OD had forgotten to decide on an attack, where a decision was required. This is a substantial procedural violation.
• " The [opponents] objection to claim 4 [of insufficient disclosure] is acknowledged in the decision under appeal [] as one of the objections to the main request pursuant to Article 100(b) EPC. [The] main request is then refused under Article 100(b) EPC for other reasons, relating to the definition of the therapy plan in claim 1, without any discussion of the separate objection to claim 4 []. When subsequently deciding, against the opponents, in favour of the first auxiliary request on the issue of Article 100(b) EPC, the opposition division does not discuss claim 4 or provide any reason why, in its opinion, its subject matter [...] is adequately disclosed ["
• " Since claim 4 is identically worded in the main request and the first auxiliary request, the objection to claim 4 is also valid for the first auxiliary request, and the issue should therefore have been addressed by the opposition division. [] As a consequence, the reasoning in the decision under appeal as to why the first auxiliary request was deemed allowable is incomplete." This is a substantial procedural violation. The Board does not remit the case but revokes the patent. The appeal fee is refunded.

EPO T 1038/14 -  link

Reasons for the Decision

The appeals of the patent proprietor and of opponent 2 comply with Articles 106 to 108 EPC and Rule 99 EPC and are therefore admissible.

1. Procedural violation and reimbursement of the appeal fee

1.1 The obligation under Rule 111(2) EPC to provide adequate reasoning in a decision open to appeal is closely linked to the principle of the right to be heard under Article 113(1) EPC, since the parties concerned have to be able to determine whether their objections and arguments were duly taken into account. A failure to provide such adequate reasoning is considered a substantial procedural violation justifying reimbursement of the appeal fee.

1.2 In its notice of opposition (see page 6 of the reasons), opponent 2 raised an objection of insufficiency of disclosure with respect to the requirement in dependent claim 4 of the opposed patent that the risk of osteoporosis was to be reduced by the use and treatment according to claim 1. In that context, the opponent argued that the patent in suit did not contain any evidence to show that the risk of osteoporosis could indeed be lowered by the treatment proposed.

1.3 The feature in question ("furnishing a reduced risk of osteoporosis") was also present, with identical wording, in claim 4 of the amended main request and of the first auxiliary request filed during of the opposition proceedings (see point III above).

1.4 The objection to claim 4 is acknowledged in the decision under appeal (see page 10, point 13.2.2) as one of the objections to the main request pursuant to Article 100(b) EPC.

However, the main request is then refused under Article 100(b) EPC for other reasons, relating to the definition of the therapy plan in claim 1, without any discussion of the separate objection to claim 4 (see the decision under appeal, point 13.2.4).

When subsequently deciding, against the opponents, in favour of the first auxiliary request on the issue of Article 100(b) EPC, the opposition division does not discuss claim 4 or provide any reason why, in its opinion, its subject matter directed to a reduced risk of osteoporosis is adequately disclosed (see the decision under appeal: point 14.3.3, exclusively discussing the feature "pre-treatment" inserted into claim 1).

1.5 Since claim 4 is identically worded in the main request and the first auxiliary request, the objection to claim 4 is also valid for the first auxiliary request, and the issue should therefore have been addressed by the opposition division.

1.6 As a consequence, the reasoning in the decision under appeal as to why the first auxiliary request was deemed allowable is incomplete.

1.7 Under these circumstances, the board considers reimbursement of the appeal fee paid by opponent 2 to be equitable by reason of a substantial procedural violation (Rule 103(1)(a) EPC).

2. Remittal

2.1 Pursuant to Article 11 RPBA, a board shall remit a case to the department of first instance (Article 111(1) EPC) if fundamental deficiencies are apparent in the first-instance proceedings, unless special reasons present themselves for doing otherwise.

2.2 In the present appeal proceedings, none of the parties requested a remittal of the case. None of the patent proprietor's pending requests contain a claim corresponding to former claim 4. Moreover, considering that the application was filed on 13 December 2001 and the opposition proceedings started in August 2012, and that the board was in a position, based on the pending requests and the factual framework of the appeal, to reach a final decision without being obliged to examine a fresh case, remittal is not deemed necessary, or indeed appropriate when weighed against the interest of procedural economy.