T 0682/16 - Non-human genetically engineered organisms

Key points

• This is a kind of Oncomouse case (opposition appeal T315/03) with a claim directed to non-human organisms comprising a host cell comprising a genetic construct. The Board applies Art. 53(a) and Rule 28(d) in great detail in the preliminary opinion (here) but that opinion does not become case law, alas, since patentee restricts to AR-2 cancelling the claims to the organism. 
• The genetic construct is a gene expression system that can be used to express a gene of interest in the cell. This is similar to T 0606/03. 
• The Board finds a likelihood of animal suffering is established because the claim is so broad so as to encompass cases wherein the genetically engineered animal suffers.
• On the other hand, a medical benefit is not credible because of the breadth of the claim.
• The Board applies the 'correspondence principle'.
• The Board also refers to the 'real test' of T 19/90 (Oncomouse examination appeal).
• The Board comments on the case where, for the purpose of Art.53(a), a claim covers both allowable and non-allowable embodiments.
• Claim 45 directed to the isolated host cell was not opposed.

• Over to the procedural stuff. The decision states that " Several oppositions were filed" and that " An appeal was lodged by one of the opponents (appellant).". The OD found that only a single opposition fee was paid and that there was a joint opposition filed by nine legal persons. I'm not aware that it would be established case law that an individual member of the 'group of joint opponents' may appeal individually. However, the Board does not comment on this in any detail.

• A question for trainees. In the present case, the letters for the joint opponents in the first instance proceedings were signed (only) by a Mr. Then. Mr. Then is neither a professional representative nor a lawyer. Explain why this is not a problem and explain the facts you have to assume for reaching this conclusion. What kind of evidence could the opposition division request from Mr. Then to show his entitlement to act in the proceedings? (normally, the question works out the same in appeal, but see the particularity above, so I limit the question to the first instance proceedings).
• Mr. Then showed up alone at the oral proceedings before the opposition division (besides the professional representative for the patentee) and wishes to present opponents' case. Would this be a problem?

EPO T 0682/16 -  link

Reasons for the Decision

Admissibility of the joint opposition and of the appeal

1. In reply to the statement of grounds of appeal, the respondent contested the decision of the opposition division on the admissibility of the joint opposition and requested the board to dismiss both, the opposition and the appeal, as inadmissible.

2. In its communication pursuant to Article 15(1) RPBA 2007, the board drew the parties' attention to the opposition division's summary in both, its summons to attend oral proceedings and the decision under appeal, of the facts and submissions on the basis of which the respondent argued against the admissibility of the joint opposition (cf. pages 2 to 4 of the Summons to attend oral proceedings; pages 3 to 6 of the decision under appeal). The board further noted that these facts and submissions were not contested in appeal and, indeed, were identical to those put forward by the respondent in appeal proceedings.

3. After consideration of the facts and submissions as well as of the respondent's arguments and the evidence on file, the board informed the parties that it saw no reason to deviate from the findings of the opposition division as regards this issue, namely that "Testbiotech e. V., represented by Mr. Then [as executive director of Testbiotech e.V.], continues to be regarded as opponent and common representative of the joint opposition" (cf. bottom of page 6 in the Summons to attend oral proceedings, and pages 6 to 8 of the decision under appeal).

4. Since the parties have not contested the board's provisional opinion on this issue, the board thus considers the joint opposition and the appeal to be admissible.

Admission of the main request into the appeal proceedings

5. The main request was filed (as auxiliary request 2) in response to the communication pursuant to Article 15(1) RPBA 2007, wherein the parties were informed of the board's provisional opinion on the issues of the appeal. The main request is thus an amendment of the respondent's case and may be admitted into the proceedings only at the discretion of the board (Article 13(1) RPBA 2020).

6. The appellant has not provided any reasons against the admission of this request into the appeal proceedings.

7. By deleting claims 48 to 53, the respondent addressed all issues raised by the appellant and by the board in its communication. The main request does not give rise to new objections and contributes to the efficiency of the procedure.

8. Therefore, the board, in the exercise of its discretion (Article 13(1) RPBA 2020), admits the main request into the appeal proceedings.

Main request

9. In the present case, the opposition was only directed against claims 48 to 53 to the extent that they related to "a non-human organism" comprising a host cell of claim 45.

10. The main request no longer contains claims directed to "a non-human organism". Thus, it overcomes all grounds of opposition. This has also been acknowledged by the appellant.

11. Therefore, the patent can be maintained on the basis of the main request and a description to be adapted thereto (Article 111(2) EPC).

Order

For these reasons it is decided that:

1. The joint opposition and the appeal are admissible.

2. The decision under appeal is set aside.

3. The case is remitted to the opposition division with the order to maintain the patent on the basis of claims 1 to 51 according to the main request filed on 8 April 2020 and a description to be adapted thereto.

T 2094/12 - Not opposed claims and G 9/91

Key points

• In this opposition appeal, dependent claim 5 was not opposed (in Form 2300, the box for only opposing some claims was ticked). At the end of the oral proceedings before the OD, the opponent had said that claim 1, amended with the feature of claim 5, was novel but not inventive. This is not prejudicial to admissibility of the appeal. 
• The Board recalls that G 9/91 held that in such cases claim 5 can be examined as to patentability,  provided that the validity is prima facie in doubt on the basis of already available information. " In this case the opposition division in application of reasons 11 of G9/91 held that validity of the claims as upheld was not prima facie called into doubt by the evidence (documents) then on file." 
• " The review of the [impugned] decision must take place under the same constraint, i.e. it must consider prima facie validity first, and only if that is not confirmed can a full examination take place. [] The appellant can of course adduce new facts & evidence upon or during appeal, but these will then be subject to the discretion afforded under Article 12(4) and Article 13 RPBA."
• The Board admits the new documents:  "[having] admitted the respondent-proprietor's newly formulated request at the very end of the opposition proceedings, it would not be equitable to then limit the appellant-opponent's case in appeal by only admitting counter-arguments falling within the confines of this initial assessment." 
• The Board finds amended claim 1 to be novel over these documents.
  Lack of inventive step of claim 1 was submitted only after the Statement of grounds. This new argument raises complex issues, and is not admitted into the procedure.

Reasons for the Decision

1. Admissibility of the appeal

1.1 The impugned decision is appealable, Article 106 EPC, and the appellant-opponent filed a notice of appeal and reasoned grounds of appeal within the prescribed time limits, meeting the formal requirements of Article 108 and Rule 99 EPC.

1.2 Admissibility of the appeal under Rule 101 (1) EPC turns on whether or not the appeal complies with Article 107 EPC, that is whether or not the opponent was adversely affected by the impugned decision.

In the present case the notice of opposition, and indeed the statement of the opponent's request at the start of oral proceedings before the opposition division (minutes, point 1), only mentioned claims 1-4, 18-23 and 27 to 31 of the patent. Thus granted claim 5, which was dependent on granted claim 1, was not specifically mentioned in the notice of opposition. Claim 1 as upheld combines granted claim 1 with the (non-optional) subject matter of granted claim 5 and is now the respondent-proprietor's main request.

1.3 The subject matter of claim 1 of the main request is therefore based on "dependent subject matters" as referred to in G 9/91, reasons, point 11. According to this point:

"...even if the opposition is explicitly directed only to the subject-matter of an independent claim of a European patent, subject-matters covered by claims which are depending on such an independent claim may also be examined as to patentability, if the independent claim falls in opposition or appeal proceedings, provided their validity is prima facie in doubt on the basis of already available information (cf. T 293/88, OJ EPO 1992, 220). Such dependent subject-matters have to be considered as being implicitly covered by the statement under Rule 55(c) EPC [now rule 76(1)(c) EPC]....".

Thus in the present case, considering in particular the last sentence above, because the opposition notice was explicitly directed to granted claim 1, it was implicitly also directed to the subject matter of granted claim 5, now claim 1 of the main request. Following G9/91, reasons, point 11 the division was thus also competent to in considering prima facie validity of the patent.

T 2154/12 - Party disposition

Key points

• The opposition concerned only granted claims 1-12. The patent as granted also included independent claim 13, with further dependent claims. Nevertheless, the patent was revoked by the OD.
• The Board: " The principle of party disposition only allows the opposition division to decide upon requests as filed by the parties. Since the appellant only had a single request during the opposition procedure, and the opposition division decided that this request contained a claim 1 which did not meet the requirements of the EPC, the opposition division had no choice but to refuse this request as a whole, which, in the absence of any other requests, resulted in the revocation of the patent."

EPO T 2154/12  - link


Reasons for the Decision

5. Request for reimbursement of the appeal fee

5.1 It was advanced on behalf of the appellant that there was no opportunity to file auxiliary requests during the opposition proceedings and the opponent had the last word in the first instance proceedings.

The board notes that with the letter dated 20 January 2010 the appellant filed an amended set of claims 1 to 14 as main request during the opposition proceedings.

With the letter dated 30 July 2010 the opponent responded to this amended set of claims 1 to 14.

The decision of the opposition division was issued on 6 September 2012.

Since the decision was issued more than two years after the last reply of the opponent, the board considers that the appellant had had enough time to file further requests, including a request for oral proceedings. Since the appellant had not done so, it was not up to the opposition division to elicit additional requests from a party in an inter-partes procedure.

5.2 It was further advanced on behalf of the appellant that the opposition division acted incorrectly in revoking the patent as granted as a whole, given that the opposition only concerned granted claims 1 to 12.

The principle of party disposition only allows the opposition division to decide upon requests as filed by the parties. Since the appellant only had a single request during the opposition procedure, and the opposition division decided that this request contained a claim 1 which did not meet the requirements of the EPC, the opposition division had no choice but to refuse this request as a whole, which, in the absence of any other requests, resulted in the revocation of the patent.

It is only in the present appeal proceedings, that the appellant filed auxiliary requests, including one (auxiliary request 6) limiting the subject-matter to the non-opposed parts of the patent in suit.

5.3 It follows that the opposition division did not commit a substantial procedural violation. In consequence, none of the arguments advanced on behalf of the appellant justify the request for reimbursement of the appeal fee (Rule 67 EPC 1973 applicable here).