- The patentee appellant files documents with the Statement of grounds. The Board admits these documents.
- “The opposition division thus had indicated that they intended to side with the patent proprietor on that point in the summons to oral proceedings. Consequently there was at this stage no necessity for the patent proprietor to provide further evidence regarding that question. The reversal of the opinion of the opposition division in the contested decision could not have been reasonably expected by the patent proprietor prior to the oral proceedings. This justifies, in the opinion of the Board, the filing of further evidence in that regard at the beginning of the appeal proceedings.”
- So, in the first instance proceedings, the patentee can wait for the negative opinion of the OD with filing documents. This is of course different in appeal (and the justification for the different treatment is not clear to me).
- As to evidence of CGK :“it is not because [the publication date of D14 and D16-D19] falls after the priority date of the patent in suit that these documents necessarily cannot be used to establish the content of the common general knowledge at the priority date of the patent in suit. It is thus not a factor of relevance in the admittance of these documents in the present case.”
- D18 is a review article published 10 years after the filing date. I don't readily see how it can be used as evidence of CGK at the filing date/priority date.
- On the issue of res judicata: “In decision T 731/11 of 29 June 2012 pertaining to an appeal lodged in the examination phase of the application underlying the present case, the Board in a different composition concluded that the claims of the then main request did not meet the requirements of Article 123(2) EPC [...] in accordance with consistent case law, opposition proceedings are separate and distinct from examination proceedings such that a decision by a board of appeal on an appeal against a decision from an examining division is not binding in subsequent opposition proceedings or on appeals therefrom, having regard both to the EPC and to the principle of res judicata”
- The Board finds that claim 1 lacks basis. “Both features are however separately defined in claims 2 and 3 of the application as originally filed whereby these claims only depend on claim 1 and do not depend from one another. Claims 2 and 3 therefore do not provide an adequate basis for the combination of these features.”
EPO T 0247/17 - link
V. The patent proprietor (appellant) lodged an appeal against that decision and filed with the statement of grounds of appeal two sets of claims as first and second auxiliary requests. Also, it was requested to admit the following documents into the proceedings:
D14: Wikipedia article of the term "Carothers equation" dated 1 March 2017
D15: Bland et al., Biomaterials 17 (1996), pages 1109-1114
D16: Schneider et al., Operative Dentistry, 2006, 31-4, pages 489-495
D17: Park et al., Dent. Mater. 2009, December 25 (12): pages 1569-1575
D18: Swiderska et al., Polish Journal of Chemical Technology, 2013, 15(2): pages 81-85
D19: Shalaby et al., Polymers for Dental and Orthopedic Applications, Shalaby and Salz, eds., CRC Press New York NY 2007, pages 112 and 113
Reasons for the Decision
1. Admittance of documents D14-D19
1.1 Article 12(4) RPBA 2007 applies to a statement of grounds of appeal filed before the entry into force of the RPBA 2020 (Article 25(2) RPBA 2020), and thus also to any document filed therewith.
1.2 Documents D14 to D19 were filed with the statement of grounds of appeal. The common denominator to these documents is that they relate to the polymerization of monomers containing more than one polymerizable group. These monomers are referred to as multifunctional monomers in D14-D19.
1.3 The appellant argued that documents D14-D19 were filed to address the reasoning of the opposition division under point 2.11 of the contested decision in which it was concluded that the term "multifunctional acidic monomer" in the sense of claim 1 of the main request covered the monomer 4-AET disclosed in the composition of comparative example 12 of D1, even if that monomer contained only one polymerizable group.
1.4 Documents D14-D19 all concern multifunctional monomers for which a description is provided by way of a definition (D14), or by way of molecular formulas (D15-D19). The information contained in these documents appears to address point 2.11 of the contested decision. D14-D15 thus can be seen as having been filed in reply to the decision of the opposition division.
1.5 Since D14 to D19 were filed with the statement of grounds of appeal, the documents were filed in accordance with Article 12(3) RPBA 2020. The respondent however argued that these documents could and should have been filed earlier during the opposition proceedings since the issue discussed under point 2.11 of the decision of the opposition division had already been raised and discussed between the parties during the opposition proceedings.
1.6 While the interpretation of the term "multifunctional acidic monomer" was indeed an issue raised since the beginning of the opposition procedure, the summons to oral proceedings of the opposition division made it explicit that, at that time, the monomer 4-AET was not considered to be a multifunctional acidic monomer on the grounds that it was known in the field of polymers that the term multifunctional in claim 1 of the main request only referred to the polymerizable portion of the monomer (Annex to the summons of 7 October 2015, page 3, third paragraph).
1.7 The opposition division thus had indicated that they intended to side with the patent proprietor on that point in the summons to oral proceedings. Consequently there was at this stage no necessity for the patent proprietor to provide further evidence regarding that question. The reversal of the opinion of the opposition division in the contested decision could not have been reasonably expected by the patent proprietor prior to the oral proceedings. This justifies, in the opinion of the Board, the filing of further evidence in that regard at the beginning of the appeal proceedings.
1.8 With regard to the publication date of D14 and D16-D19, it is not because that date falls after the priority date of the patent in suit that these documents necessarily cannot be used to establish the content of the common general knowledge at the priority date of the patent in suit. It is thus not a factor of relevance in the admittance of these documents in the present case.
1.9 Under these circumstances the Board does not make use of its power under Article 12(4) RPBA 2007 to hold D14-D19 inadmissible.
[...]
2.5.7 As to D14-D19, these documents refer to multifunctional monomers as monomers bearing multiple polymerizable groups, from which the appellant concluded that the term "multifunctional acidic monomer" in claims 1 and 2 of the main request implied a monomer containing multiple polymerizable groups as well. D14-D19 however only show that within the specific context of these documents, a multifunctional monomer was defined as to a monomer having multiple polymerizable groups. That however does not change the fact that in the context of claims 1 and 2 of the main request the "multifunctional acidic monomer", because of its ambiguity, can still be seen as referring to monomers containing several acid groups and one polymerizable group, as is the case for 4-AET. D14-D19 do not show that that interpretation would be excluded by the skilled reader of the main request.
[...]
3.2 In decision T 731/11 of 29 June 2012 pertaining to an appeal lodged in the examination phase of the application underlying the present case, the Board in a different composition concluded that the claims of the then main request did not meet the requirements of Article 123(2) EPC on the grounds that a polymerizable composite material including the same combination of a nonacid co-monomer having a concentration ranging from 5% to 80% by weight and the use of bis-2(methacryloxy)ethyl phosphate as the multifunctional acidic monomer did not find a basis in the application as originally filed (points 2.1.2 to 2.1.5 of the decision). The respondent argued during the oral proceedings before the present Board that decision T 731/11 taken during the examination phase was also binding in the opposition phase (including opposition appeal proceedings) with respect to the decision to be taken under Article 123(2) EPC concerning the first auxiliary request.
3.3 However, in accordance with consistent case law, opposition proceedings are separate and distinct from examination proceedings such that a decision by a board of appeal on an appeal against a decision from an examining division is not binding in subsequent opposition proceedings or on appeals therefrom, having regard both to the EPC and to the principle of res judicata (Case Law of the Boards of Appeal, 9th Edition, July 2019, V.A.8.3). In the present case that means that the decision T 731/11 taken in the examination phase is not binding for the present Board.
3.4 It must therefore still be assessed whether the requirements of Article 123(2) EPC with regard to the present first auxiliary request filed during opposition appeal proceedings are met or not, irrespective of the decision reached by the Board in case T 731/11 on that issue.
[...]
3.6 Both features are however separately defined in claims 2 and 3 of the application as originally filed whereby these claims only depend on claim 1 and do not depend from one another. Claims 2 and 3 therefore do not provide an adequate basis for the combination of these features.
3.7 The appellant additionally referred to paragraphs 6, 8, 11, 29 and 31 of the application as originally filed as passages forming a basis for the combination of features defining claims 1 and 2 of the first auxiliary request.
[...]
3.8 Under these circumstances, the Board comes to the conclusion that claims 1 and 2 of the first auxiliary request do not meet the requirements of Article 123(2) EPC.
3.2 In decision T 731/11 of 29 June 2012 pertaining to an appeal lodged in the examination phase of the application underlying the present case, the Board in a different composition concluded that the claims of the then main request did not meet the requirements of Article 123(2) EPC on the grounds that a polymerizable composite material including the same combination of a nonacid co-monomer having a concentration ranging from 5% to 80% by weight and the use of bis-2(methacryloxy)ethyl phosphate as the multifunctional acidic monomer did not find a basis in the application as originally filed (points 2.1.2 to 2.1.5 of the decision). The respondent argued during the oral proceedings before the present Board that decision T 731/11 taken during the examination phase was also binding in the opposition phase (including opposition appeal proceedings) with respect to the decision to be taken under Article 123(2) EPC concerning the first auxiliary request.
3.3 However, in accordance with consistent case law, opposition proceedings are separate and distinct from examination proceedings such that a decision by a board of appeal on an appeal against a decision from an examining division is not binding in subsequent opposition proceedings or on appeals therefrom, having regard both to the EPC and to the principle of res judicata (Case Law of the Boards of Appeal, 9th Edition, July 2019, V.A.8.3). In the present case that means that the decision T 731/11 taken in the examination phase is not binding for the present Board.
3.4 It must therefore still be assessed whether the requirements of Article 123(2) EPC with regard to the present first auxiliary request filed during opposition appeal proceedings are met or not, irrespective of the decision reached by the Board in case T 731/11 on that issue.
[...]
3.6 Both features are however separately defined in claims 2 and 3 of the application as originally filed whereby these claims only depend on claim 1 and do not depend from one another. Claims 2 and 3 therefore do not provide an adequate basis for the combination of these features.
3.7 The appellant additionally referred to paragraphs 6, 8, 11, 29 and 31 of the application as originally filed as passages forming a basis for the combination of features defining claims 1 and 2 of the first auxiliary request.
[...]
3.8 Under these circumstances, the Board comes to the conclusion that claims 1 and 2 of the first auxiliary request do not meet the requirements of Article 123(2) EPC.
Peter, I admire your reporting and your inclusion of your own "take" on each Decision. I guess that by including your own views you hope to stimulate reaction from your readership.
ReplyDeleteSo here goes.
You write that you are unable to see how D18, published 10 years after the date of the claim : "can be used as evidence of CGK at the filing date/priority date." You surprise me. For courts in England, the CGK is usually decisive to the outcome and it is proved by the cross-examination of technical expert witnesses, in court, 10 years or so later than the date of the claim. It seems to me that the CGK is a fact and, like many other facts, might only be provable years after the date of their occurrence.
For example, let's take E_Scooters and head injuries. Was it CGK, amongst the community of doctors in A&E (accident and emergency) Departments of urban hospitals, that most E-Scooter accidents are self-inflicted (that is, they involve no other vehicle). In this week's Spiegel news magazine the statistics are published. It's a staggering 87%. We all know it now. The doctors already knew it last summer, but back then you would not be able to prove it. You won't find a persuasive written publication till long after the date when the K became C and G. I suspect this is not the exception but, rather, the general rule. Do say though, if I am seeing it wrong.
Dear Max, thanks for your comment. Upon further thought, CGK can perhaps be proven at least by written contemporaneous evidence, which does not need to be published before the priority date. For instance, lab notes, meeting notes, private correspondence of scientists, manuscripts of unpublished papers, may all prove contemporaneous knowledge - though evidence of knowledge in one research group or company (or one hospital) does not demonstrate CGK.
ReplyDeleteHowever, in this case D18 was likely written well after the priority date, and being a review article I don't think the authors of D18 have carefully restricted themselves to literature more than 10 years old, i.e before the priority date at issue. That might be the difference with cross-examination where the witness is aware of the cut-off date.
I note even T 766/91 does not say that you can handbooks of textbooks published after the priority date only that "such a publication is evidence both that the information is known and that it is common general knowledge" [at the date of publication, I think].
Peter, you make a very important point with publications that emerge after the date of the claim: how shall we satisfy ourselves that they are reporting on the facts, as they stood, at the date of the claim (and not at some later date). When I wrote my first comment I was thinking of history books, which are later published but report on the facts that pertained on a particular day, like the day the Berlin Wall broke down. We need the historians, to give us what were the true facts on that day.
ReplyDelete