T 0682/16 - Non-human genetically engineered organisms

Key points

• This is a kind of Oncomouse case (opposition appeal T315/03) with a claim directed to non-human organisms comprising a host cell comprising a genetic construct. The Board applies Art. 53(a) and Rule 28(d) in great detail in the preliminary opinion (here) but that opinion does not become case law, alas, since patentee restricts to AR-2 cancelling the claims to the organism. 
• The genetic construct is a gene expression system that can be used to express a gene of interest in the cell. This is similar to T 0606/03. 
• The Board finds a likelihood of animal suffering is established because the claim is so broad so as to encompass cases wherein the genetically engineered animal suffers.
• On the other hand, a medical benefit is not credible because of the breadth of the claim.
• The Board applies the 'correspondence principle'.
• The Board also refers to the 'real test' of T 19/90 (Oncomouse examination appeal).
• The Board comments on the case where, for the purpose of Art.53(a), a claim covers both allowable and non-allowable embodiments.
• Claim 45 directed to the isolated host cell was not opposed.

• Over to the procedural stuff. The decision states that " Several oppositions were filed" and that " An appeal was lodged by one of the opponents (appellant).". The OD found that only a single opposition fee was paid and that there was a joint opposition filed by nine legal persons. I'm not aware that it would be established case law that an individual member of the 'group of joint opponents' may appeal individually. However, the Board does not comment on this in any detail.

• A question for trainees. In the present case, the letters for the joint opponents in the first instance proceedings were signed (only) by a Mr. Then. Mr. Then is neither a professional representative nor a lawyer. Explain why this is not a problem and explain the facts you have to assume for reaching this conclusion. What kind of evidence could the opposition division request from Mr. Then to show his entitlement to act in the proceedings? (normally, the question works out the same in appeal, but see the particularity above, so I limit the question to the first instance proceedings).
• Mr. Then showed up alone at the oral proceedings before the opposition division (besides the professional representative for the patentee) and wishes to present opponents' case. Would this be a problem?

EPO T 0682/16 -  link

Reasons for the Decision

Admissibility of the joint opposition and of the appeal

1. In reply to the statement of grounds of appeal, the respondent contested the decision of the opposition division on the admissibility of the joint opposition and requested the board to dismiss both, the opposition and the appeal, as inadmissible.

2. In its communication pursuant to Article 15(1) RPBA 2007, the board drew the parties' attention to the opposition division's summary in both, its summons to attend oral proceedings and the decision under appeal, of the facts and submissions on the basis of which the respondent argued against the admissibility of the joint opposition (cf. pages 2 to 4 of the Summons to attend oral proceedings; pages 3 to 6 of the decision under appeal). The board further noted that these facts and submissions were not contested in appeal and, indeed, were identical to those put forward by the respondent in appeal proceedings.

3. After consideration of the facts and submissions as well as of the respondent's arguments and the evidence on file, the board informed the parties that it saw no reason to deviate from the findings of the opposition division as regards this issue, namely that "Testbiotech e. V., represented by Mr. Then [as executive director of Testbiotech e.V.], continues to be regarded as opponent and common representative of the joint opposition" (cf. bottom of page 6 in the Summons to attend oral proceedings, and pages 6 to 8 of the decision under appeal).

4. Since the parties have not contested the board's provisional opinion on this issue, the board thus considers the joint opposition and the appeal to be admissible.

Admission of the main request into the appeal proceedings

5. The main request was filed (as auxiliary request 2) in response to the communication pursuant to Article 15(1) RPBA 2007, wherein the parties were informed of the board's provisional opinion on the issues of the appeal. The main request is thus an amendment of the respondent's case and may be admitted into the proceedings only at the discretion of the board (Article 13(1) RPBA 2020).

6. The appellant has not provided any reasons against the admission of this request into the appeal proceedings.

7. By deleting claims 48 to 53, the respondent addressed all issues raised by the appellant and by the board in its communication. The main request does not give rise to new objections and contributes to the efficiency of the procedure.

8. Therefore, the board, in the exercise of its discretion (Article 13(1) RPBA 2020), admits the main request into the appeal proceedings.

Main request

9. In the present case, the opposition was only directed against claims 48 to 53 to the extent that they related to "a non-human organism" comprising a host cell of claim 45.

10. The main request no longer contains claims directed to "a non-human organism". Thus, it overcomes all grounds of opposition. This has also been acknowledged by the appellant.

11. Therefore, the patent can be maintained on the basis of the main request and a description to be adapted thereto (Article 111(2) EPC).

Order

For these reasons it is decided that:

1. The joint opposition and the appeal are admissible.

2. The decision under appeal is set aside.

3. The case is remitted to the opposition division with the order to maintain the patent on the basis of claims 1 to 51 according to the main request filed on 8 April 2020 and a description to be adapted thereto.