Key points
- The decision under appeal is the opposition division's decision ruling that none of the grounds for opposition under Articles 100(a), (b) and (c) EPC prejudiced the maintenance of the patent as granted and rejecting the opposition.
- V. In the decision under appeal, inventive step was assessed starting from the disclosure of D1 and, in a second approach, D2. With either approach, the claimed subject-matter was held to involve an inventive step.
- The opponent appeals.
- The Board considers the claims of the main request to be obvious over D1 with D2.
- "Auxiliary request 1 was filed for the first time with the respondent's reply to the statement setting out the grounds of appeal, and thus it constitutes an amendment to the respondent's case according to Article 12(4) RPBA, the admittance of which is subject to the board's discretion. "
- " In the present case, it is not self-explanatory how the amendment by incorporation of the features of claim 6 into claim 1, i.e. the restriction to a single-dose form containing 5 to 350 myg T4, could overcome the inventive step objection against the main request. The dosage range for a single dose is in any case not a distinguishing feature over the disclosure of D1".
- Fair enough - even though the amendment can then still make the claim inventive, some substantiation by the proprietor could be expected.
- " In its written preliminary opinion, the opposition division stated that it regarded D2 as the "closest" prior art, but also briefly outlined its inventive step approach starting from D1 (see point 9.3.1 of the annex of the summons to oral proceedings). Even if it were to be considered that the decision under appeal deviated from the preliminary opinion by providing a more detailed assessment of inventive step starting from D1, the respondent was not exonerated by the mere filing of amended claims from the obligation of expressly specifying the relevance of the amendments for overcoming the inventive step objection raised by the opponent."
- " In any case, since D1 was used by the appellant as a starting point for the assessment of inventive step from the very start of the opposition proceedings (see the notice of opposition, section 3.1), the respondent should have presented any auxiliary request aiming to improve its position with regard to this line of argument in the proceedings before the opposition division."
- "In inter partes proceedings such as opposition proceedings, a party has to anticipate and prepare for the eventuality that the opposition division might agree with the arguments of the opposing party. Also, a preliminary opinion provided by an opposition division is not binding as regards the final decision."
- To me, a question still is: why? The OD found the claims as granted to be inventive and would not have considered the amended claim at all in their decision.
- "Since the requirements of Article 12(3) and (4) RPBA are not met, the board decided not to admit auxiliary request 1 (Articles 12(3) and 12(5) RPBA)."
- The relevant part of Art. 12(4) is the fourth sentence: "In the case of an amendment to a patent application or patent, the party shall [...]provide reasons why the amendment overcomes the objections raised.
- The Board does not cite Art. 12(6)(s.2) RPBA
EPO
The link to the decision can be found after the jump.
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