T 0956/19 (II) - Res judicata and interlocutory appeal decisions

Key points

• Application filed in 2005. Grant in 2013. Interruption of the opposition at the end of 2013 (bankruptcy). Resumed in 2015. First OP OD in March 2017. Second OP in November 2018. Decision OD in 2019.  First decision Board in February 2023. Second decision Board in February 2024, issued in writing on 23.12.2024 (!)
• No communication about the delay under Art. 15(9) RPBA is visible in the online file.
• In the first appeal decision, the Board had held that (in translation): "the subject-matter of claim 1 of auxiliary request 1 is not new [over D35] within the meaning of Article 54 EPC. " Furthermore, "The examination of the other requests (see point IX) could not be completed and, therefore, after a decision has been taken on the above-mentioned aspects, the procedure must be continued for the points not yet decided." (the oral proceedings lasted to 18:35)
• Now, the Board considers that AR-2 is novel over D35. 
• "The claimed subject-matter thus differs from that disclosed in document D35 (as well as from that of claim 1 of the first auxiliary request, see point 29) in the concrete definition of the route of administration ("and wherein the glucocorticoid is administered intraperitoneally, intravenously, intraarterially, intramuscularly, intradermally, subcutaneously, intratumorally or selectively in or via a defined organ"). 
• "It is clear from [a paragraph in the patent itself]  that the defined routes of administration, which essentially represent all common routes of administration, are nothing other than those which the person skilled in the art would have routinely used."
• "Appellant I [the proprietor] has not made any submissions, either in writing or at the oral proceedings before the Board, on the inventive step in relation to the specific differences between the subject-matter of claim 1 of auxiliary request 2 and the subject-matter disclosed in document D35. In particular, it has not expressed any view as to why the route of administration which represents the difference between the subject-matter disclosed in D35, as set out in the Board's interlocutory decision on novelty in the present case, and the subject-matter of claim 1 of auxiliary request 2, should be considered inventive. At the oral proceedings before the Board, Appellant I's submissions on this issue were limited solely to arguments which presupposed that the subject-matter of document D35 did not anticipate that of claim 1 of auxiliary request 1."
• "Neither in the written procedure nor at the oral proceedings did Appellant I make any separate submissions on inventive step by reference to technical features of the claims of these auxiliary requests [3-9 and 11-13]. Rather, it relied on its arguments in relation to auxiliary request 2. "
• AR-10 is rejected as unclear.
• The patent is revoked.
• The Board running out of time during the first oral proceedings, therefore, gave the proprietor about one more year of patent lifetime in appeal (and about two years until the written decision), even though the Board does not seem to decide any substantive issue on the allowability of the claims in the present decision.
• There is the interesting development of a Board member retiring between the first and second oral proceedings, in particular one week after the first appeal decision was issued. This is covered by Article 8 RPBA.
• The proprietor would like to reopen the debate as to what D35 discloses. However, this is barred by the res judicata status of the first appeal decision: "a substantive decision was also taken [in the first appeal decision] on the objection of lack of novelty in relation to document D35, which also includes the factual finding that document D35 discloses a subject-matter which anticipates the subject-matter of claim 1 of auxiliary request 1 in a way that is detrimental to novelty and consequently has all the features of that subject-matter. This finding that document D35 discloses a subject-matter which corresponds to the subject-matter of claim 1 of auxiliary request 1, i.e. which discloses all the claimed features, is irrevocable and can no longer be called into question when assessing auxiliary requests 2 to 13. Arguments and evidence aimed at having the Board in its amended composition reassess this matter cannot be taken into account due to the binding effect which, pursuant to Article 8(2) RPBA, also applies to the substitute member."
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EPO 

The link to the decision can be found after the jump.

https://www.epo.org/de/boards-of-appeal/decisions/t190956du2