Key points
- The opponent submits an Annex with its Statement of ground. The Board does not approve of this.
- " The board is not persuaded by the appellant's [opponent's] argument that both objections were part of the appeal proceedings because they had been raised during opposition proceedings and were maintained in appeal in sections A.2.4.1 and A.3.2 of Annex A to the statement of grounds of appeal. Annex A entitled "Consolidated arguments from Opposition proceedings" may well summarise the objections made during the opposition proceedings by the opponent. However, the arguments in this annex are not automatically part of the opponent's appeal case. An appellant must present its complete case in the statement of grounds of appeal."
- "Therefore, the mere compilation of objections raised during opposition proceedings in an annex to and a mere statement in the statement of grounds of appeal that it is intended to rely on all facts, evidence and objections presented during the opposition proceedings collated in such an annex (see page 4 of the statement of grounds of appeal) do not constitute an indication of the reasons for setting aside a decision under appeal required under Rule 99(2) EPC."
- " Moreover, in the case at hand, the discrepancy between the definition of the expression cassette provided on pages 12 and 13 and Figure 1 of the statement of grounds of appeal [] and the definition in section A.3.2 of Annex A confirm that not all arguments raised during the opposition proceedings were indeed maintained in appeal. The objections compiled in Annex A hence do not form part of the statement of grounds of appeal."
- The Board's objections in the preliminary opinion, based on a different claim interpretation, are therefore exceptional circumstances and the patentee's new claim request is admitted.
- "The appellant [opponent] also objected to the unusual procedural situation arising from the submission of the main request conditional on its admittance. However, the conditional nature of the main request is understood by the board to be acceptable given that it entails the simultaneous withdrawal of all other claim requests on file. As the respondent was not submitting a new main request while maintaining other auxiliary requests, it was clear that it wished to discuss only the new main request, provided it was admitted in the proceedings. In view of this context, the board is satisfied that submitting the new main request conditional to its admittance was not detrimental to procedural economy."
Main request
Admittance (Article 13(2) RPBA 2020)
2. The main request submitted by letter dated 21 June 2022 constitutes an amendment of the respondent's appeal case to which Article 13(2) RPBA 2020 applies. Any such amendment must, in principle, not be taken into account unless there are exceptional circumstances justified with cogent reasons by the party concerned.
3. New objections raised by the board in a communication may qualify as such "exceptional circumstances" (see Case Law of the Boards of Appeal of the European Patent Office, 10th edn. 2022, V.A.4.5.4.a), second paragraph and the decisions cited there).
4. In its communication, the board had considered, inter alia, that, contrary to the claim construction underlying the decision under appeal, claim 1 of the former main request (see section IV.) did not require that in the recombinant DNA expression cassette, the mouse cytomegalovirus immediate early 1 gene (mCMV-IE1) promoter be necessarily operably linked to the infectious bursal disease virus (IBDV) viral protein 2 (VP2) gene and the human cytomegalovirus immediate early 1 gene (hCMV-IE1) promoter be necessarily linked to the Newcastle disease virus (NDV) fusion protein (F) gene. The board further considered that this claim construction and the insertion site in the HVT vector were both relevant for inventive step. Objections to the same effect were not present in the statement of grounds of appeal.
5. Instead, the appellant stated that "the broadest technically sensible interpretation of claim 1 of '899 [the patent] is an 'expression cassette' intended for the expression of an IBDV VP2 gene (via elements a-c), which merely further comprises the stated elements d-e ..." (see page 12 of the statement of grounds of appeal). Thus, in the appellant's claim construction in the statement of grounds of appeal, elements a to c of the expression cassette are operably linked.
6. According to the appellant, the above-cited sentence had to be understood in line with the argument on page 10 of the statement of grounds of appeal that "the proximity of the elements is not a feature of the claim" and that "[p]articularly, the proximity of elements a-c and elements d-e is not specified". The sentence on page 12 therefore could only relate to the missing second transcription terminator after elements d and e and could hence not be understood as acknowledging that elements a to c were operatively linked.
7. However, the sentence on page 12 represents the appellant's conclusion drawn from the claim construction on pages 10 to 13 of the statement of grounds of appeal. Here, the sentence from page 10 precedes the interpretation of the term "expression cassette", which ends with the conclusion cited in point 5. above that in the "broadest technically sensible interpretation", elements a. to c. form an expression cassette intended for the expression of an IBDV VP2 gene. Since this is the conclusion from the entire claim construction provided on pages 10 to 13 of the statement of grounds of appeal, the sentence on page 10 cited by the appellant (see point 6.) cannot be used to interpret this conclusion differently.
8. This interpretation of the appellant's claim construction is furthermore confirmed in the legend of Figure 1 and on page 13 of the statement of grounds of appeal, where it is stated that the elements a to c of the expression cassette are considered to be operatively linked in an "IBDV VP2 expression cassette" (see Figure 1), that is, "intended for expressing IBDV VP2 via the claimed elements a-c".
9. Consequently, the statement of grounds of appeal did not contain the objection that elements a. to c. of the expression cassette were not linked. Moreover, while it is stated that the nature of the HVT insertion site(s) is not specified in the claim (see fourth paragraph from the bottom of page 10), it is not argued anywhere in the statement of grounds of appeal that this might have consequences for inventive step. The board concludes therefore that the objections were new to the appeal proceedings.
10. The board is not persuaded by the appellant's argument that both objections were part of the appeal proceedings because they had been raised during opposition proceedings and were maintained in appeal in sections A.2.4.1 and A.3.2 of Annex A to the statement of grounds of appeal. Annex A entitled "Consolidated arguments from Opposition proceedings" may well summarise the objections made during the opposition proceedings by the opponent. However, the arguments in this annex are not automatically part of the opponent's appeal case. An appellant must present its complete case in the statement of grounds of appeal.
11. Therefore, the mere compilation of objections raised during opposition proceedings in an annex to and a mere statement in the statement of grounds of appeal that it is intended to rely on all facts, evidence and objections presented during the opposition proceedings collated in such an annex (see page 4 of the statement of grounds of appeal) do not constitute an indication of the reasons for setting aside a decision under appeal required under Rule 99(2) EPC.
12. Moreover, in the case at hand, the discrepancy between the definition of the expression cassette provided on pages 12 and 13 and Figure 1 of the statement of grounds of appeal (see points 5., 7. and 8. above) and the definition in section A.3.2 of Annex A confirm that not all arguments raised during the opposition proceedings were indeed maintained in appeal. The objections compiled in Annex A hence do not form part of the statement of grounds of appeal.
13. Consequently, in view of the above considerations, new objections were raised in the board's communication which, in accordance with established case law (see point 3. above), are considered to qualify as exceptional circumstances justified by cogent reasons.
14. Additionally, when deciding on the request for admittance, the board considered aspects set out in Article 13(1) RPBA 2020 for guidance. While the state of proceedings at which the new main request was filed was in the phase after issuance of the communication under Article 15(1) RPBA 2020, the board holds that they had been filed sufficiently early, namely three months ahead of the oral proceeding, such that the appellant and the board were in a position to consider the amended claims. This was not contested by the appellant.
15. Furthermore, by defining the nucleotide sequence of the DNA expression cassette and the HVT insertion site in claim 1 of the main request, the amendments overcome the new objections raised in the board's communication and did not prima facie give rise to new objections.
16. The appellant also objected to the unusual procedural situation arising from the submission of the main request conditional on its admittance. However, the conditional nature of the main request is understood by the board to be acceptable given that it entails the simultaneous withdrawal of all other claim requests on file. As the respondent was not submitting a new main request while maintaining other auxiliary requests, it was clear that it wished to discuss only the new main request, provided it was admitted in the proceedings. In view of this context, the board is satisfied that submitting the new main request conditional to its admittance was not detrimental to procedural economy.
17. The board therefore decided to admit the main request into the appeal proceedings (Article 13(2) RPBA 2020).
No comments:
Post a Comment
Do not use hyperlinks in comment text or user name. Comments are welcome, even though they are strictly moderated (no politics). Moderation can take some time.