T 1589/12 - Avirulent isolate

Key points

• Claim 1 as granted reads " An avirulent Lawsonia intracellularis isolate, wherein said avirulent isolate is [...] any avirulent Lawsonia intracellularis isolate of European origin, characterized in that said avirulent Lawsonia intracellularis does not cause fecal shedding at day 14 post vaccination."
• It is interesting that the characterizing feature seems to define a result to be achieved. From the OD decision, I understand the closest prior art differed in that it was of US origin, not European origin.
• The decision only deals with whether or not to admit D6. The Board decides to not admit D6. The opponent has no further objections, and the patent is maintained (in amended form, namely with claim 1 directed to
  "1. A live vaccine for the immunization of an animal, comprising a pharmaceutically effective amount of an avirulent live Lawsonia intracellularis isolate and a pharmaceutically acceptable carrier, wherein said avirulent live isolate is [] any avirulent live Lawsonia intracellularis isolate of European origin, characterized in that said avirulent live Lawsonia intracellularis does not cause fecal shedding at day 14 post vaccination.").
  
  

EPO T 1589/12 -  link

Summary of Facts and Submissions

I. The appeal of opponent 1 (hereinafter "appellant") lies against the decision of the opposition division rejecting the opposition filed against European patent No. 1651260, entitled "Lawsonia intracellularis of European origin and vaccines, diagnostic agents and methods of use thereof."

Claim 1 as granted reads:

"1. An avirulent Lawsonia intracellularis isolate, wherein said avirulent isolate is Lawsonia intracellularis deposit isolate ATCC No. PTA-4926 or any avirulent Lawsonia intracellularis isolate of European origin, characterized in that said avirulent Lawsonia intracellularis does not cause fecal shedding at day 14 post vaccination."

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Reasons for the Decision

Admission of the novelty objections based on document D6 into the appeal proceedings

1. During the appeal proceedings the appellant raised two novelty objections based on the disclosure of document D6 against the subject-matter of claim 1 as granted. The first objection was raised in the statement of grounds of appeal while the second was raised in response to the respondent's reply (see section VII). Neither objection had been raised during the opposition proceedings. The respondent objected to the admission of these objections into the appeal proceedings.

2. It is established case law of the Boards of Appeal that the "purpose of the appeal procedure inter partes is mainly to give the losing party a possibility to challenge the decision of the Opposition Division on its merits" (see decision G 9/91 and opinion G 10/91 of the Enlarged Board of Appeal, OJ EPO 1993, 408 and 420, reasons, point 18). As a consequence, the factual and legal scope of appeal proceedings is thus largely determined by that of the opposition proceedings preceding them.

3. Article 12(4) RPBA provides that the board has discretion to hold inadmissible facts, evidence or requests which could have been presented in the first instance proceedings. In exercising its discretion the board can make admitting a citation into the appeal proceedings dependent on whether it is prima facie relevant (see for example decision T 724/08).

4. Under Article 13(1) RPBA any amendment to a party's case after it has filed its statement of grounds of appeal or reply may be admitted and considered at the board's discretion. It is established case law that how this discretion is exercised depends on the facts of each case, but that one factor may be the relevance of the new material and whether it could have been produced before (see for example decision T 188/05).

5. In the present case, the subject-matter of claim 1 objected to by the appellant is the same as that considered in the decision under appeal, i.e. that of claim 1 as granted. Document D6 had been filed with opponent 2's notice of opposition, and had been relied upon by opponent 2 in the context of lack of inventive step, albeit not as closest prior art. Document D6 was thus part of the opposition proceedings. The appellant was also aware from the opposition division's communication accompanying the summons to oral proceedings, and thus well before the decision under appeal was issued, that its novelty objection based on the disclosure of document D1 was likely to fail.

6. In the board's judgement, the appellant could thus have filed during the opposition proceedings its novelty objections based on the disclosure of document D6 against the subject-matter of claim 1 as granted.

7. Moreover, in the board's view, the disclosure of document D6 does not appear to anticipate the subject-matter of claim 1 as granted (see section IX) and the submissions based on this document are thus also not prima facie relevant.

8. Hence the board decided, in the exercise of its discretion in accordance with Articles 12(4) and 13(1) RPBA, to hold inadmissible and not to admit, respectively, the novelty objections based on the disclosure of document D6.

Main (sole) request

9. The appellant had no objections to that request and the board is satisfied that the requirements of the EPC are met.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the opposition division with the order to maintain the patent on the basis of the set of claims of the main request filed as auxiliary request VIII with the letter dated 6 February 2013, and a description to be adapted thereto.