T 0528/11 - Scope of appeal

Key points

• The scope of an appeal of an opponent can be restricted to particular claims if the other claims are not attacked. 
• Board:  " Whilst claims 1 and 2 have been extensively discussed under Articles 83 and 56 EPC in the decision under appeal, all other claims were referred to only in a general manner []. In the statement of Grounds of Appeal, the appellant maintained the objections raised under Articles 83 and 56 EPC against claims 1 and 2 as upheld by the opposition division (claims as granted). No other claims were attacked in the Grounds of Appeal. Thus, the scope of the appeal is limited to claims 1 and 2." 
• In addition, new evidence filed with the Statement of grounds was not admitted as it could have been filed in the first instance proceedings. 

EPO T 528/11 - Link

Reasons for the Decision

Admissibility of new evidence

1. Documents D14, D14a - D14f were filed by the appellant [opponent] with the statement of Grounds of Appeal in support of its arguments relating to the reproducibility of the method of claim 2 (Article 83 EPC).

The reproducibility of this method was addressed in opponent/appellant's Notice of opposition and in a communication of the opposition division annexed to the Summons to oral proceedings. Documents D12 and D13 were filed by the patentee/respondent in order to address this issue. In the communication pursuant to Article 15(1) RPBA, the board noted that the appellant had not provided reasons to explain the filing of these documenRts at that late stage of the proceedings and why they could not have been filed at first instance. The appellant did not respond and thus no reasons were provided.

2. Three months after filing its Grounds of Appeal, the appellant submitted documents D15 - D17. It was stated, that these documents were filed in reply to the comments of the opposition division made in the decision under appeal, concerning the presence of the functional feature of claim 1 in lactic acid producing bacteria known from the prior art (cf. page 9, point 5.4.8 of the decision under appeal) (Article 56 EPC).

In the Notice of opposition, the opponent/appellant relied on the lactic acid producing bacteria of document D2 as the closest prior art and formulated the objective technical problem as the provision of alternative lactic acid producing strains (cf. inter alia, pages 19-20, points 3.2.1 and 3.2.2 of Notice of opposition). This line of argumentation was addressed at first instance by the patentee/appellant and by the opposition division in a communication annexed to the Summons to the oral proceedings. The comments made by the opposition division in the decision under appeal do not differ from the comments already made in said communication and cannot therefore be used as an explanation for the late filing of new evidence. Documents D15 - D17 could and should have been filed at an earlier stage of the proceedings.

3. Therefore, the board, exercising its discretion, decides not to admit documents D14, D14a - D14f and D15 - D17 into the appeal proceedings (Articles 12(4) and 13(1) RPBA, respectively).

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Scope of the appeal

6. Whilst claims 1 and 2 have been extensively discussed under Articles 83 and 56 EPC in the decision under appeal, all other claims were referred to only in a general manner (cf. page 10, point 5.4.12, page 12, point 5.9.3 and page 22, point 6.14.6 of the decision under appeal). In the statement of Grounds of Appeal, the appellant maintained the objections raised under Articles 83 and 56 EPC against claims 1 and 2 as upheld by the opposition division (claims as granted). No other claims were attacked in the Grounds of Appeal. Thus, the scope of the appeal is limited to claims 1 and 2.

Main Request

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Article 100(b) EPC (Article 83 EPC)

Product-claim 1

8. The deposited bacterial strains LN 99 and LN 113 are described in claim 1 as having a specific functional property, namely "the ability to colonise and become established in a human vagina, displaying a disturbed vaginal flora of microorganisms, upon vaginal administration, even during menstrual discharge, wherein said bacterial strain or strains is/are considered established if the bacterial strain or strains is/are still present in the vagina after at least two menstrual cycles from the time of administration" (cf. point IX supra).

9. According to decision G 1/03 (supra), "(i)f an effect is expressed in a claim [and is not achieved by the claimed subject-matter; added by the board], there is lack of sufficient disclosure. Otherwise, i.e. 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" (cf. G 1/03, supra, point 2.5.2 of the Reasons). In line therewith, the claimed strains LN 99 and LN 113 must have the functional feature cited in claim 1. Otherwise, there is lack of sufficient disclosure.