T 2178/22 - The weakest link and a remarkable remittal

Key points

•  This case concerns a patent with an independent claim 7 directed to a barly plant obtained by an essentially biological process. The patent has a filing date in 2011. In principle, claim 7 is therefore allowable, under G 3/19 but the opponents (which include some NGOs) still raise an objection under the clause of Art. 53(b) EPC about essentially biological processes for the production of plants or animals  (and requested a referral to the Enlarged Board for some questions). The OD found the claims allowable (also rejecting the inventive step objection).
• However, the Board does not tell us in the decision whether the OD was correct in this assessment under Article 53(b) because the Board perceives a substantial procedural violation in how the OD decided on inventive step (violation of the right to be heard of the opponent) and decides to remit the case on that ground - without deciding on the merits of the other grounds of opposition, which were independent and not affected by the procedural violation.
• I find this remarkable. Of course, some kinds of procedural violations vitiate the entire decision (wrong composition of the OD, partiality, and missing signatures in the decision). There may also be cases where the decision of the OD is based on only one ground (namely, if the patent is revoked on one ground). However, in the present case, the decision of the OD dealt with multiple separate grounds. I don't see why the Board cannot deal with the other grounds in the current decision. Procedural economy - or timeliness as an aspect of quality - requires the Boards to not unduly delay their appeal decision on the grounds not affected by the procedural violation.
• Incidentally, there was also an issue of the extent of opposition - were the independent claims 13-16 directed to a beverage (beer) opposed? This was discussed during the oral proceedings before the Board. The minutes indicated that thereafter, the Board asked if the OD's reasoning on inventive step was sufficient. It is not clear to me if any of the parties to the appeal had raised an issue under Rule 111(2) on that point, or if it was raised by the Board of its own motion.
• Furthermore, the deficiency of the OD's reasoning under inventive step concerns claim 1 for a process of making beer using barley. The OD had found that claim 7 directed to the (conventionally bred) barley plant was inventive. The Board does not identify a procedural defect on that reasoning (and does not arrive at the merits of the reasoning). The Board's problem is that the OD insufficienlty epxlained why claim 1 was also inventive. The reasoning of the OD was that claim 1 directed to a method of preparing a barlye based beverage specified "wherein the method involves reduced energy input, the method comprising the steps of: (i) providing a barley plant or part thereof, wherein said barley plant comprises: (a) a first mutation that results in a total loss of functional lipoxygenase (LOX)-1; and (b) a second mutation resulting in a total loss of functional LOX-2; and (c) a third mutation resulting in a total loss of functional S-adenosylmethionine:methionine S-methyltransferase (MMT); ... (iii) mashing said barley ... thereby obtaining a wort" and that features (a)-(c) defined the same plant as in claim 7. Hence, claim 1 specified the use of the inventive plant of claim 7. It is well-established that such a claim is then also inventive, even if all other features are routine (see GL G-VII,14: "Similarly, if the subject-matter of a product claim is new and non-obvious there is no need to investigate the novelty and non-obviousness of the subject-matter ... of any claims for a use of that product.") 
• Indeed, "the opposition division observed "that claim 1 relies on a method wherein plants with the same technical features as claim 7 are employed" (see point 20, last two lines)."
• The Board seems to see this differently: "since the method fails to limit the ingredients of the beverage to barley grains or specify their quantity or proportion, the board has doubts about the opposition division's implied conclusion that the properties of barley grains used necessarily impart a technical effect on the method of claim 1".
• The Board, in its preliminary opinion, refers to its earlier decision T 420/19 (post), where the issue under Article 53(b) was the same. 
• The patent was granted in 2016. The appeal was filed in 2022. 

EPO 

The link to the decision can be found after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t222178eu1