- The Board explains that under Rule 103(4)(c) (withdrawal request oral proceedings), “any reimbursement has to be ordered ex officio by the board if the requirements of the provision are met”, no request is necessary.
- “Rule 103(4)(c) EPC refers to "the communication issued by the Board of Appeal in preparation for the oral proceedings". The provision therefore presupposes that the board has indeed issued a communication. However, in particular the provision (i) is silent on the possible content or nature of the communication except that it is "issued ... in preparation for the oral proceedings", and (ii) leaves it open whether, once a first communication has been issued in preparation for the oral proceedings, any second or further such communication re-opens the period for requesting reimbursement. However, these points, and their application in respect of the date of the entry into force of the provision, do not need to be considered further in the present case, since there are other reasons why no reimbursement of the appeal fee is to be ordered.”
- In particular, the letter with the withdrawal of the request for oral proceedings was filed after the one month period.
- “ the appellant's [earlier] statement on the telephone relating to non-attendance at oral proceedings was made outside the framework of oral proceedings, and so cannot have any legal effect”
- This is so because: “Proceedings before the boards of appeal are primarily in writing (cf. Article 12 RPBA and Rule 100(2) EPC), and any submitted document must in particular have been transmitted to the EPO in a permitted manner and validly signed (cf. Rule 2(1) and Rule 50(3) EPC). Where oral proceedings pursuant to Article 116 EPC are arranged in accordance with Rule 115(1) EPC, they take place before the board, during which a party may make procedurally relevant oral submissions.”
- Finally, claim 1 was considered to be unclear because “one of the features characterising the pharmaceutical aqueous solution of claim 1 of the main request is a viscosity of less than about 1000 cPs” without specifying the temperature.
- “It is part of the basic knowledge in thermodynamics that viscosity is a function of temperature and that, in liquids, viscosity usually increases as temperature decreases. Thus, the characterisation of a liquid by a viscosity value without indicating the temperature at which viscosity has been measured makes little sense.” The applicant submitted that implicityl 20C was used, but to no avail.
- “To the board's knowledge, there is no convention in the scientific community that when the measuring temperature of a viscosity value is not given it should be understood that it is 20°C. The convention is, rather, that because of the dependency of viscosity on temperature a viscosity value must always be accompanied by the temperature at which it has been measured.”
2. Main request - Clarity (Article 84 EPC)
2.1 One of the features characterising the pharmaceutical aqueous solution of claim 1 of the main request is a viscosity of less than about 1000 cPs.
2.2 It is part of the basic knowledge in thermodynamics that viscosity is a function of temperature and that, in liquids, viscosity usually increases as temperature decreases. Thus, the characterisation of a liquid by a viscosity value without indicating the temperature at which viscosity has been measured makes little sense.
Claim 1 does not indicate the temperature at which its aqueous solution is characterised by having a viscosity of less than about 1000 cPs. This introduces a lack of clarity, since a solution that fulfils the viscosity condition of claim 1 at a given temperature could not do so at lower temperatures, and vice versa. Consequently, the fact that claim 1 does not give the temperature at which viscosity is measured renders the claim unclear.
2.3 The appellant has not disputed the relationship between viscosity and temperature. Its argument was, rather, that claim 1 was clear because, in the absence of a temperature being given, the skilled person would understand that this was 20°C.
The board cannot accept this argument, which is merely an unsupported assertion. To the board's knowledge, there is no convention in the scientific community that when the measuring temperature of a viscosity value is not given it should be understood that it is 20°C. The convention is, rather, that because of the dependency of viscosity on temperature a viscosity value must always be accompanied by the temperature at which it has been measured.
2.4 Hence, the board holds that claim 1 of the main request lacks clarity, contrary to Article 84 EPC.
[...]
7. Reimbursement of the appeal fee (Rule 103(4)(c) EPC)
7.1 The appellant had initially requested oral proceedings. The request was subsequently withdrawn, enabling the board to decide on the case without holding oral proceedings.
7.2 Pursuant to Rule 103(4)(c) EPC, as in force since 1 April 2020, the appeal fee shall be reimbursed at 25% if any request for oral proceedings is withdrawn within one month of notification of the communication issued by the board in preparation for the oral proceedings, and no oral proceedings take place. The amended provision applies to any pending appeal pursuant to Article 2(2) of the Decision of the Administrative Council of 12 December 2019 amending Rule 103 EPC (CA/D 14/19, see OJ EPO 2020, A5), and thus to the present appeal case.
A request by the party concerned for a reimbursement is not a prerequisite of Rule 103(4)(c) EPC. Accordingly, any reimbursement has to be ordered ex officio by the board if the requirements of the provision are met.
Rule 103(4)(c) EPC refers to "the communication issued by the Board of Appeal in preparation for the oral proceedings". The provision therefore presupposes that the board has indeed issued a communication. However, in particular the provision (i) is silent on the possible content or nature of the communication except that it is "issued ... in preparation for the oral proceedings", and (ii) leaves it open whether, once a first communication has been issued in preparation for the oral proceedings, any second or further such communication re-opens the period for requesting reimbursement. However, these points, and their application in respect of the date of the entry into force of the provision, do not need to be considered further in the present case, since there are other reasons why no reimbursement of the appeal fee is to be ordered.
7.3 For a reimbursement of the appeal fee pursuant to Rule 103(4)(c) EPC the request for oral proceedings must have been withdrawn within one month of notification of the communication issued by the board.
The withdrawal of the request for oral proceedings by the appellant's letter received on 24 June 2020 was made too late. Calculated from notification of the communication dated 13 May 2020, receipt of the letter was outside the one-month period under Rule 103(4)(c) EPC, which had expired on 23 June 2020 pursuant to Rule 126(2) and Rule 131(2),(4) EPC.
The fact that the board was informed on 22 June 2020 - and therefore still in good time - that no one would attend the oral proceedings for the appellant did not have any legal consequences. The question which arises in this context, namely whether or not the statement of non-attendance at oral proceedings qualifies as a withdrawal of the request for oral proceedings - within the meaning of Rule 103(4)(c) EPC or in general - does not need to be addressed further.
Proceedings before the boards of appeal are primarily in writing (cf. Article 12 RPBA and Rule 100(2) EPC), and any submitted document must in particular have been transmitted to the EPO in a permitted manner and validly signed (cf. Rule 2(1) and Rule 50(3) EPC). Where oral proceedings pursuant to Article 116 EPC are arranged in accordance with Rule 115(1) EPC, they take place before the board, during which a party may make procedurally relevant oral submissions.
In the present case, the appellant's statement on the telephone relating to non-attendance at oral proceedings was made outside the framework of oral proceedings, and so cannot have any legal effect, irrespective of whether the fact that the registrar had received it could in any case be considered equivalent to receipt by the board. Nor does the fact that the registrar minuted the statement and passed it on to the board mean that it subsequently became a written submission by the appellant.
Only upon receipt of the appellant's letter on 24 June 2020 was there a procedurally relevant submission on the part of the appellant, but this fell outside the one-month period under Rule 103(4)(c) EPC.
7.4 Before arriving at the present negative findings, there was no need for the board to provide the appellant with the opportunity to comment on the question of reimbursement of the appeal fee. No request for reimbursement of the appeal fee had been submitted by the appellant, the board's conclusion instead being in conformity with such a request not having been made, so there was no request to reject. Furthermore, the question of reimbursement of the appeal fee does not entail any legal or further financial disadvantage for the appellant.
Order
For these reasons it is decided that:
The appeal is dismissed.
The Dutch Supreme Court has decided (judgement 25.09.2020) that oral proceedings by telephone is acceptable in view of the impossibility to hold in person hearings because of Covid-19, for certain proceedings pertaining to compulsory psychiatric care, based on the recently adopted law dealing with Covid, referring also to Article 6 ECHR. ECLI:NL:HR:2020:1509.
ReplyDeleteIt may perhaps be argued that Article 125 EPC provides a legal basis for any procedural measures due to pandemics, as pandemics were probably not foreseen in Article 116 EPC.