T 0377/18 - Post-published evidence

Key points

• Inventive step is at issue in this pharma case. Claim 1 is directed to “ a composition comprising a solid dispersion comprising at least [regorafenib] in substantially amorphous form and a pharmaceutically acceptable matrix”.
• D5 is the closest prior art. “The compounds described under entries 42 and 49 [of D5] differ from regorafenib only in a substitution on one of the aryl rings (being hydrogen or chlorine instead of fluorine). ... Concerning the formulation of these actives, some general information is given on page 10, line 10 to page 12, line 29 [of D5]. Solid dispersions are not mentioned.”
• “either Formula (I) [a broad Markush formula] or any of the 103 compounds, in particular the closely-related compounds of entries 42 and 49 [of D5], can be taken as the starting point in the present case”
• Note that the c.p.a. is indeed an embodiment,  not a document as a whole.
• On to the plausibility issue (or closely related issue, in any case, see the G 2/21 referral): “Firstly, it will be discussed whether any surprising effect can be acknowledged to be linked to the difference in [molecule] structure”
• “The application as filed does not explicitly identify any surprising effects linked to the structure of the active agent.”
• “the respondent [patentee] presented data which according to it demonstrated the superiority in activity of regorafenib as compared with compound 49 (Tables 1 and 2). Having been submitted for the first time in the reply to the grounds of appeal, the data are clearly post-published. As they present data on an effect that cannot be derived from the application as filed, despite document (5) being discussed in the background section, the data are to be disregarded.”
• “No information is provided [note: in para. [0004] of the patent, as I understand] as to whether regorafenib is capable of inhibiting raf or any of the other three kinases in a way different from the cited background art (including document (5)) and/or whether such inhibition would lead to any improvement in the treatment. In fact, the application as filed contains no statement relating to and no data confirming the extent of the inhibition or indicating that this inhibition would lead to an improvement in the treatment of any hyper-proliferative disease. The appellant has furthermore pointed to the fact that there was no evidence that regorafenib inhibited these four kinases at all.”
• D5 is cited on page 2 at the top of the application as filed, in a section that merely lists a number of prior art references without much discussion or analysis.
• “The board thus comes to the conclusion that an improvement over the compounds of document (5) was neither foreshadowed, nor alleged, nor shown in the application as filed. Document (5) is not merely a document that could have been considered by the patent proprietor (or the then applicant) when drafting the application, but a document that actually was considered as can be seen by its being cited in the background section. Since, as a consequence, post-published evidence cannot be taken into account, none of the effects related to improved treatment (different pattern of inhibition, second-line treatment, higher levels of inhibition) can be considered when applying the problem-solution approach.”
• The feature of a solid dispersion does not provide for an inventive step either. The Board, as part of a detailed analysis, notes that “Document (6) thus clearly teaches that solid dispersions are a galenic form worth exploring when trying to provide a formulation of a poorly soluble drug.”
• The patent is revoked.
• The application was filed in 2005, the decision to grant was issued in 2015.
  
  
• Furthermore, non-anonymous third party observations filed after the summons for oral proceedings in appeal are not admitted: “ In addition, a third party is not an actual party to the proceedings, and as such should not be accorded more favourable treatment than an actual party.”

EPO T 0377/18

Link to the decision after the jump, as well as the text of the decision.

T 2255/15 - Admissibility of third party observations

 Key points

• In this opposition appeal, third party observations were filed, first anonymously, later signed by a ‘real industry company’. The Board has to decide on the admissibility of these observations.
• The Board: “ The board observes that in accordance with the case law of the boards, observations by third parties pursuant to Article 115 EPC can also be filed during an appeal proceedings (T 390/90, G 9/91, OJ 1993, 408, T 1756/11). This interpretation is consistent with the wording of Article 115 EPC, which sets no time limit in this respect (T 390/90, OJ 1994, 808). However, in accordance with the case law, Article 115 EPC must not be interpreted in such a way as to grant third parties rights which extend beyond those of the parties to proceedings (T 951/91, OJ 1995, 202; see also Schachenmann, Article 115 EPC, in Singer-Stauder, The European Patent Convention, Vol 2, 3rd ed.). Since Article 114(2) EPC confers to the bodies of the EPO the discretionary power to disregard submissions not filed in due time, this provision must also apply to observations by third parties.”
• The Board:“ Since the Rules of Procedures of the Boards of Appeals specify some criteria for exercising this discretion in appeal proceedings with respect to the submissions of the parties to the proceedings, in the board's view, these criteria must also apply to third-party observations. Hence, the criteria laid down in Article 12(2) RPBA 2020 and 12(4) RPBA 2007 are to be taken into consideration in deciding whether and to what extent the submissions at issue must be considered.”
• As a comment, I agree that TPO's should not be treated more favourably than party submissions. This does not mean automatically that TPO's should be treated equally to party submissions in opposition and opposition appeal proceedings in my view. 
  
  
• The opponent requested a remittal. The  Board does not remit the case. “The attack starting from D4 as the closest prior art was filed for the first time during the oral proceedings before the board and thus is an entirely new attack. If by filing such a new attack, a party could force the board to remit the case, it would be at the party's disposition to shift the case back to the first instance at whatever stage of the appeal proceedings and to thereby start, at any point in the appeal proceedings, a new opposition before the opposition division. This would not only run counter to the principle of procedural economy but to the very nature of appeal proceedings, which is to review the appealed decision (Article 12(2) RPBA 2020) rather than to allow for the start of a second opposition proceedings.”
• The Board does not admit the new attack. “Document D4 was discussed in the appeal proceedings in the context of novelty of the granted claims. It was also discussed in the assessment of inventive step of the claims of auxiliary request 7 but for establishing the obviousness of the solution to the problem formulated in view of D1 or D2 rather than D4 as the closest prior art.”

T 2255/15 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t152255eu1.html

1.5 The board observes that in accordance with the case law of the boards, observations by third parties pursuant to Article 115 EPC can also be filed during an appeal proceedings (T 390/90, G 9/91, OJ 1993, 408, T 1756/11). This interpretation is consistent with the wording of Article 115 EPC, which sets no time limit in this respect (T 390/90, OJ 1994, 808). However, in accordance with the case law, Article 115 EPC must not be interpreted in such a way as to grant third parties rights which extend beyond those of the parties to proceedings (T 951/91, OJ 1995, 202; see also Schachenmann, Article 115 EPC, in Singer-Stauder, The European Patent Convention, Vol 2, 3rd ed.). Since Article 114(2) EPC confers to the bodies of the EPO the discretionary power to disregard submissions not filed in due time, this provision must also apply to observations by third parties. Since the Rules of Procedures of the Boards of Appeals specify some criteria for exercising this discretion in appeal proceedings with respect to the submissions of the parties to the proceedings, in the board's view, these criteria must also apply to third-party observations. Hence, the criteria laid down in Article 12(2) RPBA 2020 and 12(4) RPBA 2007 are to be taken into consideration in deciding whether and to what extent the submissions at issue must be considered.

As set out above, the following objections were raised in the third-party observations:

- lack of novelty of the subject-matter of claims 1 and 4 as granted in view of A006 and D3a

- lack of novelty of the subject-matter of claim 1 of claim set D over A012

- lack of inventive step of the subject-matter of claims 2 and 6 as granted and the claims of all claim sets submitted by the patent proprietor over A006 in combination with A007

- lack of inventive step of the subject-matter of claims 1 and 4 as granted and claim 1 of claim sets A' to F' over A014 as the closest prior art in combination with A015

- lack of inventive step of the subject-matter of claim 1 as granted and claim 1 of claim sets A' to C' over D3a

None of these objections had been raised before in the opposition or appeal proceedings. Document A006 is a document discussed in the context of novelty of the granted claims. It is also discussed, in combination with annexes 1-2, in the context of inventive step of the claims of auxiliary request 7 (claim set D). Annexes 1 and 2 were filed to show activity of compositions according to the invention and compositions not according to the invention. The submission of A006 and annexes 1-2 does not constitute a direct and timely response to facts, objections, arguments or evidence on which the decision under appeal is based. The third-party observations of 15 February 2016 do not provide any argument why the impugned decision would not be correct and which would justify the submission of A006 and annexes 1-2. The same reasoning applies with regard to the attack of lack of inventive step over A006 in combination with A007; A014 and the attack of lack of inventive step based on this document as the closest prior art; the attack of lack of novelty based on D3a; and the attack of lack of novelty based on document A012.

G 0002/19 - Exceptions to the right to oral proceedings

Key points

• The full written decision in G2/19 was recently issued. The order was already announced during the oral proceedings:
  1. A third party within the meaning of Article 115 EPC who has filed an appeal against a decision to grant a European patent has no right to have its request for an order that examination proceedings in respect of the European patent are re-opened for the purpose of removing allegedly unclear claims (Article 84 EPC) heard at oral proceedings before a board of appeal of the European Patent Office. An appeal filed in such a way has no suspensive effect
  2. Oral proceedings before the boards of appeal at their site in Haar do not infringe Articles 113(1) and 116(1) EPC.
•  As to the place of oral proceedings, the EBA notes that the starting point is that the place and time of oral proceedings can have a connection with the right to be heard. Choosing a place or time that is entirely out of the ordinary can give the impression as a defective willingness (of the Board) to engage with the party's concerns. However, this is not seriously debated with regards to the relocation of the place of oral proceedings from Munich to Haar. 
• So the next time the Board summons you in Tokio and/or on Sundays, you can invoke Articles 113 and 116.
• The EBA notes that Article 116(1) EPC allows for exceptions; the circumstances of the underlying case justify such an exception. The EBA notes that Article 116(1) EPC applies to all kinds of procedures before the EPO. 
• "Diese Vielfalt im Anwendungsbereich spricht dagegen, Artikel 116 (1) Satz 1 EPÜ gleichsam Absolutheitscharakter beizulegen. Die Norm ist vom Konventionsgeber ersichtlich als Grundsatzregelung für die typischen Fallgestaltungen gedacht, mit denen die Verfahrensorgane des Europäischen Patentamts in ihrer täglichen Praxis konfrontiert sind. Ausnahmen vom Grundsatz sind aber nicht ausgeschlossen, wenn die Anwendung aufgrund der besonderen Umstände des Einzelfalls sinnwidrig wäre. So verhält es sich im Ausgangsverfahren."
• The EBA notes that the appellant is not a party to the grant proceedings (Article 115) and hence is not entitled to appeal (Article 107). 
• The EBA makes an interesting remark about Article 115, namely that the Examining Divisions are obliged to take note of the Third Party Observations. The EBA then states that  "Ungeachtet der Frage, inwieweit ein Verstoß dagegen justiziabel ist," the Examining Division had taken note of the TPO's at issue, according to the file. As a comment, I wonder if this means that answer 1 above is not absolute, i.e. that appeal is in fact possible in the event that the file does not show that the ED had taken note of the TPO's.
• The EBA discussed one decision of a national court, namely BGH X ZR 95/05. As a comment, I don't know if there are no decision of other national courts (FR, GB, NL) on the topic. It is always particular to see only a German national decision being discussed in German language EPO proceedings.
• Now for the reasons why there is an exception to Article 116(1) in this case:
"Artikel 116 (1) Satz 1 EPÜ ist vielmehr dahin einschränkend auszulegen, dass die bloße formale Position als faktischer Beteiligter am Beschwerdeverfahren nicht ausreicht, um die Durchführung einer mündlichen Verhandlung verlangen zu können, wenn der Petent, wie hier, nicht zur Beschwerdeeinlegung befugt ist, weil er im Rechtssinne nicht am vorangegangenen Verfahren beteiligt war oder wenn er – was hier zugleich vorliegt - einen der Beschwerde nicht zugänglichen Gegenstand verfolgt. "
• In the above, "Petent" means petitioner. I'm not sure why the EBA uses that term instead of "appellant" ("Beschwerdeführer"). The two grounds are hence 1) the appellant was not a party to the first instance proceedings and 2) the appellant 'pursues an object which is not accessible to the appeal'
• The effect is that the Board can reject the appeal as inadmissible "ohne Einhaltung weiterer prozessualer Formalitäten" (as in G1/97), i.e. without oral proceedings and (in view of G1/97) without giving the appellant an opportunity to comment under Article 113 EPC.
• The appeal also lacks suspensive effect. The EBA finds that Article 106(1) s.2 has a general character, just as Article 116. "Es besteht hingegen kein anerkennenswertes Interesse daran, die aufschiebende Wirkung auch einem Rechtsbehelf beizulegen, der, wie die Beschwerde eines Dritten wegen unklarer Ansprüche, keinen Rückhalt im Europäischen Patentübereinkommen hat und deshalb offensichtlich unzulässig ist. Dem ist durch eine entsprechende Ausnahme von der Grundsatzregelung in Artikel 106 (1) Satz 2 EPÜ Rechnung zu tragen. 
• As a comment, the referral was completely silent on the suspensive effect. I am not sure if there is precedent for the EBA answering more questions than those referred. 
• As to admissibility of the referral, the EBA finds that the second question (answer 1 above) is admissible. The fact that the appeal is inadmissible, does not make the referral inadmissible (contrary to the President's submissions). The first question of the TBA is inadmissible, because the second question already fully covers the Board's need for clarification. In contrast, the first question of the TBA involved a generalisation to all cases wherein the appeal appears inadmissible "at first sight". The EBA notes that this is an undefined legal term, which is not derived from the EPC and which is not defined in the referral decision.  
• Yet, the EBA considers the appeal to be an "offensichtlich unzulässigen Rechtsbehelfs". As a comment, apparently, this legal concept is sufficiently clear, in view of the EBA whereas the legal concept of "at first sight" inadmissible appeal (used by the TBA in its first question) was not, according to the EBA. "Offensichtlich unzulässig ist ein Rechtsbehelf etwa dann, wenn er von einer zur Rechtsmitteleinlegung nicht befugten Person stammt (hier: Dritter im Sinne von Artikel 115 EPÜ), oder wenn damit ein Beschwerdeziel verfolgt werden soll, das vom Europäischen Patentübereinkommen nicht als Gegenstand einer Beschwerde nach Artikel 106 (1) EPÜ anerkannt, sondern ausgeschlossen ist (hier: Beseitigung von vermeintlichen Undeutlichkeiten der Patentansprüche im Sinne von Artikel 84 EPÜ)."  (emphasis added).
• As a comment, the word "etwa" ("for example") may indicate that the exception also applies to other kinds of inadmissible appeals. It seems to me that the EBA only gives two examples of  " "offensichtlich unzulässigen Rechtsbehelfs" and I have found no definition of the term in G2/19. Moreover, the EBA does not seem to indicate what is the difference between a normally inadmissible appeal and an "offensichtlich unzulässigen Rechtsbehelfs". Comments (especially of German native speakers) are welcome; I have to say that I don't find G2/19 a very easy read.
• The EBA states that  "Ergänzend ist klarzustellen, dass die Einlegung eines aufgrund solcher Umstände offensichtlich unzulässigen Rechtsbehelfs konsequenterweise keine aufschiebende Wirkung entfaltet." So, "offensichtlich unzulässigen" appeals lack suspensive effect. This is a useful addition to the literature (e.g. Visser, Art.106(1):2 and the MGK discussed therein). However, in my view, the EBA's reasoning would have benefited from a definition of "offensichtlich unzulässigen" appeals rather than the indication of two examples. The underlying issue could be whether a patentee can appeal (timely) against the grant of his own patent (in order to file a divisional application during the appeal proceedings).
• Edited 04.10.2019 19:30

EPO G 2/19 G2/19 G0002/19 G 0002/19 - link

Headnote

(link)

1. A third party within the meaning of Article 115 EPC who has filed an appeal against a decision to grant a European patent has no right to have its request for an order that examination proceedings in respect of the European patent are re-opened for the purpose of removing allegedly unclear claims (Article 84 EPC) heard at oral proceedings before a board of appeal of the European Patent Office. An appeal filed in such a way has no suspensive effect.
2. Oral proceedings before the boards of appeal at their site in Haar do not infringe Articles 113(1) and 116(1) EPC.

Sachverhalt und Anträge

I. Vor der Technischen Beschwerdekammer 3.5.03 ist das Verfahren T 831/17 anhängig, das sich auf die Erteilung des europäischen Patents Nr. 2 378 735 (im Folgenden: Streitpatent) am 12. Januar 2017 bezieht. Auf die Erteilung ist am 8. Februar 2017 im Europäischen Patentblatt hingewiesen worden. Das Streitpatent geht auf eine Teilanmeldung aus der früheren europäischen Patentanmeldung Nr. 06113477.1 (im Folgenden: Stammanmeldung) zurück und betrifft ein Verfahren zum Betreiben eines Mobilfunknetzes mit mehreren nebengeordneten Ansprüchen. Patentanspruch 1 lautet:

T 1830/13 - Document from TPO's

Key points

• In this opposition appeal, TPO's were filed in November 2017 also submitting a new document D21.
• In December 2018, one day before the oral proceedings, the opponent files D21.
• The Board admits D21 because it is highly relevant. 
• " The board notes that the appellant's request to admit document D21 was submitted very late and that it represents an entirely fresh case. Such considerations would normally result in the non-admission of a document" 
• " Although no party appears to have studied document D21 until shortly before the oral proceedings, this document is considered by the board to be of such relevance for the issue of novelty that the board should not exercise its discretion under Article 114(2) EPC to disregard it. Thus, the board decides to admit document D21 into the appeal proceedings." 
• The Board remits  the case. 

EPO T 1830/13 -  link

Summary of Facts and Submissions

I. The opponent (hereinafter appellant) appealed against the decision of an opposition division to maintain the European patent No. 1 975 231 in amended form.

II. The patent proprietor (hereinafter respondent) replied to the appellant's statement of grounds of appeal.

III. Several third party observations were submitted under Article 115 EPC. The third party observations submitted under cover of a letter dated 3 November 2017, included the document WO 02/066516, published on 29 August 2002. This document is referred to in the submissions and in this decision as document D21.

VI. On 4 December 2018, one day before the oral proceedings, the appellant submitted a request that document D21 should be admitted into the proceedings. The appellant argued that this document was highly relevant as regards the novelty of the patent in suit. The appellant pointed out that this document had been brought to the attention of the parties over a year earlier, and was hence no surprise, and further argued that it did not raise any complex issues requiring postponement of the oral proceedings.

Reasons for the Decision

Request for costs

1. The board notes that the respondent's request for costs was received one day after the board had heard the parties final requests, closed the debate, and had announced its decision. Moreover, it differs from the respondent's final requests submitted in the oral proceedings before the board (see minutes, page 2, fourth paragraph).

2. According to the case law of the Boards of Appeal, once a decision has been taken the board is no longer empowered or competent to take any further action apart from drafting the written decision (cf. "Case Law of the Boards of Appeal of the EPO", 8th edition 2016, IV.E.6.1.2, 1165). It is established practice that all the parties' requests, including any requests as to costs, must be made before any decision is announced in oral proceedings (cf. "Case Law", supra, IV.C.6.3.1, 1000).

T 0694/10 - Anonymous TPO in appeal

Key points

• In this opposition case, the Board disregards anonymous third party observations because they are not relevant.
• Note that in T 1439/09 and T 146/07, the Board had held that anonymous third party observations in appeal are to be disregarded anyway as they are anonymous (irrespective of their relevance). The present decision seems to open the possibility of such observations being considered by the Board, if they are relevant.

EPO T 694/10 - link

Entscheidungsgründe

[...] 3. Einwendungen Dritter

3.1 Nach der Ladung zur mündlichen Verhandlung wurden anonyme Einwendungen Dritter nach Artikel 115 EPÜ gegen die Patentierbarkeit der beanspruchten Erfindung erhoben.

3.2 Im vorliegenden Fall waren die Einwendungen Dritter für die Entscheidung nicht relevant und wurden daher auch nicht berücksichtigt.