T 1202/19 - Holding claims admitted by OD inadmissible

Key points

•  Claim 1 of the Main Request is directed to: "Use of McCoy cells persistently infected with Lawsonia intracellularis bacteria to grow and obtain these bacteria in purified form"
• "Lawsonia intracellularis is highly pathogenic." (wiki). 
• This post is however about procedural aspects of the case.
• The OD revoked the patent. The Board finds the claims of the main request to be not novel and AR-1 to AR-8 to be not allowable.
• Turning to AR-9 to AR-17: "The opposition division admitted auxiliary requests 9 to 17 into the opposition proceedings and considered that they did not overcome the objections discussed at the oral proceedings before the opposition division."
• "The respondent [opponent] contests this decision and maintains the objection against their admission already raised before the opposition division. Reference is made to the established case law and to the course of events at first instance, in particular the renumbering of the auxiliary requests at the beginning of the oral proceedings which had as a consequence the avoidance of a discussion - and thus, a decision - on the subject-matter of granted claim 1."
• "The respondent's [opponent's] request not to admit them into the appeal proceedings is understood mainly as a request to review the discretionary decision of the opposition division."
• The Board holds the requests inadmissible.
• " The sole reason for the opposition division for admitting auxiliary requests 9 to 17 into the proceedings appears thus to be the fact that "the patentee intends to maintain these requests for an eventual appeal against the decision of the opposition division" and so the opposition division considered it "legitimate to maintain the auxiliary requests as fall-back positions" [as stated in the decision under appeal]. The board, though, considers that it is not reasonable to admit claim requests into the opposition proceedings for the sole reason of providing fall-back positions in possible appeal proceedings; "
• "Claim 1 of auxiliary requests 9 to 17 is directed to a method to obtain McCoy cells persistently infected with Lawsonia intracellularis bacteria. " AR-9 to AR-17 also include a second independent claim being a use claim. The OD found the use claims not allowable for the MR and AR-1 and thereby could held AR-9 to AR-17 unallowable without examining the independent method claim. 
• The issue is probably that if AR-9, filed with the SoG / already before the OD is admitted, cancelling the use claim could be an attempted amendment in the course of the appeal proceedings.
• 
  

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

https://www.epo.org/law-practice/case-law-appeals/recent/t191202eu1.html

Admission and consideration of auxiliary requests 9 to 17

39. The opposition division admitted auxiliary requests 9 to 17 into the opposition proceedings and considered that they did not overcome the objections discussed at the oral proceedings before the opposition division. Indeed, whilst there was one claim in auxiliary requests 9 to 11 and 14 to 17 identical to claim 1 of the main request and thus, these auxiliary requests lacked novelty (Article 54 EPC), auxiliary requests 12 and 13 comprised a claim corresponding to claim 1 of auxiliary request 1 and thus, these auxiliary requests lacked inventive step (Article 56 EPC). These auxiliary requests were filed prior to the oral proceedings (as auxiliary requests 1 to 9) and renumbered at the beginning of the oral proceedings. The opposition division further stated that the patent proprietor intended to maintain these auxiliary requests for an eventual appeal and therefore, these auxiliary requests were legitimate fall-back positions. Thus, the opposition division admitted them into the proceedings (cf. page 2, point 6, and page 11, point 30, of the decision under appeal).

40. The respondent contests this decision and maintains the objection against their admission already raised before the opposition division. Reference is made to the established case law and to the course of events at first instance, in particular the renumbering of the auxiliary requests at the beginning of the oral proceedings which had as a consequence the avoidance of a discussion - and thus, a decision - on the subject-matter of granted claim 1.

41. Auxiliary requests 9 to 17 were admitted into the proceedings - and a decision on their non-allowability was taken - by the opposition division. The respondent's request not to admit them into the appeal proceedings is understood mainly as a request to review the discretionary decision of the opposition division.

42. According to the case law, the board should only overrule the way in which the opposition division has exercised its discretion if it has done so according to the wrong principles, or without taking into account the right principles, or in an unreasonable way, and has thus exceeded the proper limits of its discretion. It is not for the board to decide whether or not - in light of the particular facts and circumstances of the case - it would have exercised such discretion in the same way (cf. "Case Law", supra, IV.C.4.5.2, 1092, and V.A.3.5.1, 1198).

42.1 The filing of claim requests within the time limit set out by the opposition division under Rule 116(1) EPC in preparation of the oral proceedings does not directly result in these requests being admitted into - and thus becoming part of - the opposition proceedings. It is at the discretion of the opposition division to refuse amendments and/or claim requests, if they are not a fair attempt to overcome the objections made; the patent proprietor has no right to have amendments and/ or new claim requests admitted at any stage of the opposition proceedings (see Rule 79(1) EPC) (cf. "Case Law", supra, IV.C.5.1.3, 1101). Thus, the fact that auxiliary requests 9 to 17 were filed - as auxiliary requests 1 to 9 - within the time limit set out by the opposition division is, as such, not the decisive criterion for admitting them into the opposition proceedings.

42.2 There is also a large body of case law considering the prima facie allowability of a new claim request, procedural expediency and an opponent's familiarity with the subject matter as the main criteria for deciding on its admission into the proceedings (cf. "Case Law", supra, IV.C.4.5, 1091, and IV.C.5.1, 1097). In the present case, the opposition division noted that auxiliary requests 9 to 11 and 14 to 17 comprised a claim corresponding to claim 1 of the main request, while auxiliary requests 12 and 13 comprised a claim 1 corresponding to claim 1 of auxiliary request 1. The opposition division concluded that the reasons given for considering claim 1 of the main request and auxiliary request 1 not to fulfil the requirements of Articles 54 and 56 EPC, respectively, applied to these auxiliary requests. None of them was considered to fulfil the requirements of the EPC and to overcome the grounds of opposition. Therefore, auxiliary requests 9 to 17 were also prima facie not allowable.

42.3 The convergence of claim requests is another criterion established in the case law for assessing the admittance of new claim requests into the proceedings. In the present case, it is not disputed that auxiliary requests 9 to 17 comprise several method-claims of the patent as granted which are neither in the main request nor in any of auxiliary requests 1 to 8. Auxiliary requests 9 to 17 thus diverge from the main request and the higher ranking auxiliary requests.

42.4 The opposition division stated that "[m]erely renumbering these requests does ... not amount to the filing of a new request" (cf. page 11, point 30, first paragraph, in the decision under appeal). This may be true as far as the subject-matter claimed is concerned. The renumbering and hence the change of the order of auxiliary requests is however not negligible but an important procedural action that has consequences for the progress or course of the proceedings. This is so because the order of the claim requests determines the order and the extent to which the opposition division examines them. In the present case, the renumbering of the auxiliary requests resulted in the opposition division not having to decide on subject-matter present in the claims as granted, namely the method-claims, but not in the main request or any of auxiliary requests 1 to 8.

42.5 The sole reason for the opposition division for admitting auxiliary requests 9 to 17 into the proceedings appears thus to be the fact that "the patentee intends to maintain these requests for an eventual appeal against the decision of the opposition division" and so the opposition division considered it "legitimate to maintain the auxiliary requests as fall-back positions" (cf. page 11, second paragraph, in the decision under appeal). The board, though, considers that it is not reasonable to admit claim requests into the opposition proceedings for the sole reason of providing fall-back positions in possible appeal proceedings; the less so, if these claim requests not only do not fulfil the criteria established in the case law for admitting them but clearly contravene them.

43. In view of these considerations and in line with the board's provisional opinion, departing from the decision of the opposition division to admit auxiliary requests 9 to 17 into the opposition proceedings, these auxiliary requests cannot be considered in the appeal proceedings.

Order

For these reasons it is decided that:

The appeal is dismissed.