T 0956/19 (I) - (I) No interruption of opposition period

Key points

• In edited machine translation: "Appellant I [the patentee] submits in its appeal that the oppositions of Opponents 1 and 2 [] have not been validly filed. In essence, it argues that the oppositions were filed during an interruption of opposition proceedings under Rule 142(1)(b) EPC that was subsequently identified and thus outside an ongoing opposition period. After resuming opposition proceedings, the oppositions should have been filed again within the new opposition period under Rule 142(4) EPC. Since this did not happen, the oppositions were not filed within the time limit and should therefore be rejected as inadmissible."
• The argument is creative, but the Board is not convinced. "Because the interruption of proceedings under Rule 142 EPC requires ongoing proceedings before the European Patent Office. Once a European patent has been granted, it is no longer subject to the jurisdiction of the European Patent Office, unless opposition or limitation proceedings are initiated (G 1/10, OJ EPO 2013, 194, reason 6). The legally effective filing of the oppositions of Opponents 1 and 2 on January 17, 2014, the last day of the opposition period under Article 99(1) EPC, was the prerequisite for the pending opposition proceedings and thus also for an interruption of these proceedings."
• "In this respect, the statement in the letter from the Legal Division of the European Patent Office dated October 15, 2014 that the opposition proceedings were interrupted from December 27, 2013, ignores the requirement of pending proceedings. According to the correct opinion, the objection proceedings were only interrupted after the pendency by the legally effective filing of the oppositions."
• "Since the incapacity of other parties to the proceedings [other than the patentee or applicant] does not constitute a reason for an interruption, time limits which apply to these parties to the proceedings are disregarded when Rule 142(4) EPC is applied. Thus, in the case of a subsequently determined interruption, only those legal consequences that arose from the beginning of the interruption until its later determination can be considered irrelevant, which result from missing interrupted time limits that the applicant or patent proprietor or his representative had to meet."
• "Appellant I correctly states that paragraph 4 of Rule 142 EPC - unlike Rule 90(4) EPC 1973 - does not expressly refer to "time limits that apply to the applicant or patent proprietor". However, this was not intended to change the content of the suspension of proceedings before the EPO under Rule 142 EPC (explanatory notes on the revision of the Implementing Regulations, OJ EPO 2003, Special Edition No. 1, page 194: "Rules 90 to 99 EPC have been editorially revised."
• "The above interpretation also coincides with the purpose of the norm. The purpose of the interruption is to prevent a loss of rights or adverse procedural developments as a result of missing a time limit if an applicant or patent proprietor or their representative is prevented from doing so for the reasons specified in Rule 142(1)(a) to (c) EPC (essentially death or incapacity to act). The interruption thus serves to protect the applicant or patent proprietor (T 54/17, Reasons, point 1.5).'
• The oppositions are, therefore, admissible

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 2303/19 - The optimum format for oral proceedings

Key points

•  "The appellant's reasons for requesting that the oral proceedings take place by videoconference were two-fold. Firstly, this format would facilitate attendance at the hearing by the appellant's in-house counsel. Secondly, it would reduce the risk of any last minute travel disruption which may occur due to the uncertainty surrounding Covid-19 cases."
• "The Board agrees with the respondent that at the relevant time there were no Covid-19 related travel restrictions which would impair the parties' possibilities to attend in person oral proceedings at the EPO premises, and that in person oral proceedings are for now the optimum format as expressed in decision G 1/21.":
• "The Board also considers that the possible attendance of an accompanying person cannot determine the format of the oral proceedings. The Board thus decided that the oral proceedings take place in person."
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EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 2604/18 - Second insufficiency attack is new ground for opposition ?

Key points

•  The Board does not admit an objection of insufficient disclosure against claims 2 and 3.
• "2.4 In as far as the appellant [opponent] considers the objection of insufficiency of disclosure against claims 2 and 3 to have been raised by analogy against granted claims 9 and 10 in the notice of opposition, the Board considers that the substance of the latter objection was in essence directed against granted method claim 8 and extended only by dependency to claims 9 and 10. [...] The objection raised later against claims 2 and 3, directed to different features than those defined in granted claim 8, would thus be tantamount to the introduction of a new ground for opposition against subject-matter which had not been opposed so far for these specific reasons. The Board of its own motion [*] does not have the power to admit such a late filed ground for opposition (G 9/91, OJ 1993, 408)."
• As a comment, it is remarkable to see G 9/91 (read, presumably, G 10/91 hn.3, i.e. "fresh grounds for opposition may be considered in appeal proceedings only with the approval of the patentee") applied to a second objection of under Article 100(b) EPC. However, G 10/91 itself is notoriously unclear about what the term "fresh ground for opposition" means.
• The Board's reasoning also seems difficult to reconcile with Art. 12 RPBA 2020, which gives the Board a discretionary power.
• * - the attack was presented by the opponent.

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 1213/19 - (II) The right to be heard and amended claims

Key points

• I present the following reasoning of the Board without comments, except for a rhetorical question: does the right to be heard under Article 113(1) EPC entail more than a formal opportunity to file amended claims, namely a right to have amended claims which are filed without undue delay and as a serious attempt to address one or more objections considered on their substantive merits?
• The Board: "Article 113(1) EPC enshrines the fundamental right of a party to be heard before a decision is issued against it. Neither this provision nor the principle of party disposition expressed in Article 113(2) EPC [...] give any right to an applicant or patent proprietor in the sense that the EPO is in any way bound to consider a request for amendment put forward by the applicant or patent proprietor (see also G 7/93, Reasons 2.1)."
• The Enlarged Board: " The referring Board of Appeal has indicated its view that Article 113(2) EPC is based on the fundamental right of parties to civil law proceedings to decide the scope of their case. In the Enlarged Board's view, this provision of the EPC does not give any right to an applicant in the sense that the EPO is in any way bound to consider a request for amendment put forward by the applicant. The effect of this provision [= Article 113(2) EPC ]  is merely to forbid the EPO from considering and deciding upon any text of an application other than that "submitted to it, or agreed, by the applicant or proprietor ..."."
• " The right to file amended claims is defined in Article 123(1) EPC in accordance with the Implementing Regulations. These provisions, and not Article 113 EPC, set the conditions for taking amendments to the claims into account." 
• " It follows that the opportunity to present comments does not inevitably extend to having any auxiliary request submitted at any time automatically admitted into the proceedings (see also R 9/11, Reasons 3.2.2); its admittance in the appeal proceedings is subject to the applicable provisions of the Rules of Procedure of the Boards of Appeal, in this case Article 13(2) RPBA 2020."
• " In the current case, the respondent [patentee] had the right and the opportunity to react and present their comments, including by filing amended claims, to the appellant's submissions regarding document D8. However, auxiliary requests 1, 3 and 4 were filed only with the letter dated 22 July 2022, i.e. more than two-and-a-half years after the appellant [opponent] had submitted document D8 and provided detailed argument on why it was of the view that the subject-matter of claim 1 as granted lacked novelty over document D8. Auxiliary request 1A was filed a further two months later. On account of these actions, it is clear that the respondent did not wish to react to the appellant's submissions, but instead chose to wait until after the board had given its preliminary opinion in the communication pursuant to Article 15(1) RPBA 2020 to file the auxiliary requests." 
• " None of these claim amendments can thus be regarded as a timely reaction to the appellant's filing of document D8, as required by the Rules of Procedures of the Boards of Appeal. For this reason alone, the board rejects the respondent's argument that it was not given an opportunity to amend the claims in reaction to the submission of document D8."
• " By choosing not to react until the board had given its preliminary assessment on document D8, the admittance of the auxiliary requests became subject to the stringent limitations of Article 13(2) RPBA 2020. Under the present circumstances, however, the respondent had the possibility and, with more than one-and-a-half years before the summons were issued, sufficient time to react to the appellant's submissions regarding document D8 by filing amended claim requests under the less stringent limitations of Article 13(1) RPBA 2020." 
• " But even after the board's communication was issued, the respondent still had the opportunity to react and amend its appeal case. In fact, point 36 at the end of the communication drew the attention of the parties to the provision of Article 13(2) RPBA 2020, under which a limited exception is provided for amending their appeal cases. At the heart of this provision, based on the principle of Article 123(1) EPC and Rules 81(3) and 100(1) EPC, is the board's discretion to admit such an amendment. The respondent therefore had the right to react to the board's provisional opinion by filing auxiliary requests. It had the opportunity to comment on the admittance of these requests, but there was no certainty that these would be admitted (see R 1/13, Reasons 13.3 and R 6/19, Reasons 5 to 11)." 

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 2502/19 - The broadest possible or objectively reasonable construction

Key points

• In this examination appeal, the Board raises a clarity objection: " it would not be clear for the skilled reader how the method of claim 1 takes the "reference temperature setting" according to feature (d) into account, other than by merely accepting it as an input to the optimisation calculation".
• The appellant "referred to several paragraphs of the description and highlighted that "the disclosure of the present application is consistent in itself". It emphasised that, by virtue of Rules 42(1) and 43 EPC, any claim construction must necessarily rely on the description. It concluded that claim 1 might be broad but did not lack clarity."
• "The board does not share the appellant's view. Rather, the claims should be taken by themselves, i.e. without relying on the description and drawings, and tested against the broadest possible or objectively reasonable construction which would occur to the skilled reader. This is because Article 84 EPC stipulates that the matter for which protection is sought is defined by the claims. It does not require to rely on any other part of the application documents."
• "For the reasons set out in points 2.1.1 to 2.1.3 above, the board considers that claim 1 of the main request, taken by itself, would indeed not be clear for the skilled reader."
• As a comment, this decision illustrates quite settled case law. Indeed, the Board cites no particular decisions to support the statement "the claims should be taken by themselves, i.e. without relying on the description and drawings, and tested against the broadest possible or objectively reasonable construction which would occur to the skilled reader" (for the examination of clarity).

EPO 

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T 0699/19 - Novelty of 2nd medical use claims

Key points

• The issue is whether the 2nd medical use claim at issue is novel over D3. D3 is WO 2004/096122 and is a prior right. Incidentally, some European patents were granted in the patent family of D3.
• The Board: "In line with established case law, a disclosure destroys novelty only if its teaching is reproducible, i.e. is disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art (see e.g. Case Law of the Boards of Appeal of the European Patent Office, 10th edition 2022, I.C.4.11). A second medical use claim is sufficiently disclosed only if the disclosure in the prior art document [*] makes it credible that the therapeutic effect on which the disclosed treatment relies can be achieved (see decision T 609/02, Reasons 9). Therefore, document D3 is only novelty destroying to the claimed subject-matter if it discloses that an anti-NGF antagonist antibody is indeed suitable for the treatment of osteoarthritis pain." 
• [*] - sufficient disclosure of a patent claim is assessed in view of the application as filed, not in view of "the prior art document", of course. On the other hand, the Board is correct that the principle of enablement applies equally for a claim (under Art.83) and for the validity of prior art documents as "effective disclosure". 
• D3:  "[0036] The methods and compositions of the present invention are useful for the treatment of pain of any etiology, including acute and chronic pain, any pain with an inflammatory component, and any pain in which an opioid analgesic is usually prescribed. Examples of pain include post-surgical pain, post-operative pain (including dental pain), migraine, headache and trigeminal neuralgia, pain associated with burn, wound or kidney stone, pain associated with trauma (including traumatic head injury), neuropathic pain, pain associated with musculo-skeletal disorders such as rheumatoid arthritis, osteoarthritis, cystitis, pancreatitis, inflammatory bowel disease, ankylosing spondylitis, sero-negative (non-rheumatoid) arthropathies, non- articular rheumatism and peri-articular disorders, and pain associated with cancer (including "break-through pain" and pain associated with terminal cancer), peripheral neuropathy and post-herpetic neuralgia." 
•  "Document D3 investigated the effect of an anti-NGF antagonist antibody on post-surgical resting pain based on a local inflammation in a rat animal model. The local inflammation was caused by an incision through skin and fascia in the hind paw of the rat (see Example 1 on pages 54 to 57). The post-surgical pain experienced in this animal model is therefore caused by an injury to soft tissue and an associated inflammation. [] In contrast, osteoarthritis is a chronic disease which affects the joints. " 
• "Document D3 therefore does not contain any experimental evidence for the treatment recited in the claim." 
• "The opponents considered that paragraphs [0007] and [0008] of document D3 disclosed a plausible technical concept for the claimed therapeutic effect." 
• The Board:  "paragraphs [0007] and [0008] of document D3 only disclose a plausible concept for rheumatoid arthritis as a condition associated with inflammation and elevated NGF levels. Unlike the disclosure in document D1 (see points 40. to 43. below), there is no information on osteoarthritis, a disease with an aetiology different from that of rheumatoid arthritis. " 
• " The opponents did not submit any evidence of common general knowledge which would support the notion that the skilled person, taking note of the disclosure in document D3, would accept that osteoarthritis pain could be treated with an anti-NGF antagonist antibody." 
• As a comment, provided that the required level of technical support (plausibility) is the same for enablement of D3 as prior art and D3 as patent application under examination, the case law could be consistent. There could be some tension if "ab initio plausibility" is the threshold for D3 to be effective as prior art and "ab initio implausibility" would be the threshold for D3 as the application from which a European patent is granted (by submitting some post-filed evidence showing that the compound is actually therapeutically effective). 
  
  
• General burden of proof on appellant?
• The Board, on the burden of proof: "[The opponents/appellants] argued that the patent proprietor had not provided any prior art raising reasonable doubts, substantiated by verifiable facts, that the treatment disclosed in document D3 could not be carried out, asserting also that the patent proprietor itself had acknowledged that osteoarthritis had an inflammatory component. However, the opposition division had decided that document D3 did not contain an enabling disclosure of treating osteoarthritis pain with an anti-NGF antagonist antibody. The opponents challenged this finding [as appellants in appeal, it may be added]. It was therefore on the opponents to demonstrate that the opposition division's decision was incorrect, and why; it was not down to the patent proprietor to raise additional doubts.  The opponents did not submit any further evidence or arguments, e.g. to the effect that the skilled person, on the basis of their common general knowledge, would have considered the claimed therapeutic effect plausible at the effective filing date of document D3."
• Here the Board sets the burden of proof (or the burden of persuasion) on the appellants (incidentally being the opponents).  
  
  
• " Consequently, on the basis of the arguments and evidence submitted by the opponents, the board is not persuaded that the opposition division's decision that document D3 did not sufficiently disclose that osteoarthritis pain could be treated with an anti-NGF antagonistic antibody was incorrect. As a consequence, in line with established case law (see point 26. above and decision T 1457/09, Reasons 36), the disclosure in document D3 is not prejudicial to the novelty of the claimed subject-matter (Article 54(3) EPC)." 

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 1776/18 - (IV) Review of the OD's decision

Key points

• "The patent proprietor filed auxiliary request 4A at the oral proceedings before the Opposition Division, which decided not to admit the request. The patent proprietor requested that this decision be set aside."
• "the request had been filed in direct reaction to the Opposition Division's conclusion that the claim under scrutiny lacked novelty over Example 4 of D6. This objection had been raised for the first time in one of the opponents' submissions filed on the last day fixed under Rule 116(1) EPC. "
• The patentee argues that "[un]nder these circumstances, the Opposition Division had no discretion not to admit the request. The reasoning of T 754/16 was applicable by analogy. According to the cited decision, auxiliary requests filed during oral proceedings in direct response to a reversal of the Opposition Division's preliminary opinion had to be admitted."
• As a  comment, the patentee could also argue that filing the auxiliary request in response to the opponent's new objection (which objection was submitted with the opponent's written submissions before the oral proceedings) is a proper exercise of the patentee's right to be heard under Article 113(1) and that holding the request inadmissible was, therefore, a violation of Article 113(1).
•  "The amendment in claim 1 of auxiliary request 4A contains a feature taken from the description ("wherein said formulation is packaged and sealed in a single or multi-use container"). How the formulation is packaged or suitable containers for the composition were aspects that were never discussed in the opposition proceedings. They came up for the first time with the amendment. 
• "The opponents objected to the admittance of auxiliary request 4A, stating that they had been taken by surprise and that this amendment would require a new and time-consuming search which could only be undertaken if the oral proceedings were adjourned. The opponents further argued that auxiliary request 4A was prima facie not allowable and noted that document D6 had been in the opposition proceedings from the beginning."
• The Board approves of the OD's decision to hold the request inadmissible.
• " As to the patent proprietor's argument that it submitted auxiliary request 4A at the earliest opportunity, the Board notes that the patent proprietor could and should have submitted this claim request already in advance of the oral proceedings before the Opposition Division. Instead, it did so only during the oral proceedings, and even then only after the Opposition Division had found that none of the higher-ranking requests was allowable."
• According to the OD's decision, O1  (Fresenius) argued that claim 1 of then AR-4 lacked novelty over Example 4 of D6. The patentee argued that AR-4A was filed in response to the novelty objection based on D6 made by O5 on 22.01.2018. Although D6 had been filed with the Notice of opposition of O1, there was no novelty objection based on it before 22.01.2018. I understand that this letter of  O5 presents the attack on p.3 where it refers to para. [0304] of D6b which is part of Example 4. The letter was forwarded to the patentee with a communication dated 25.01.2018, deemed notification 04.02.2018. 
• The oral proceedings were held on 22.03.2018. 
• If the Board considers the delay (between 04.02.2018 and 22.03.2018) indeed to be an inexcusable delay, then the Board is of course right that the OD could properly decide to hold the auxiliary request inadmissible. 
• Apparently, the Board also takes issue with the patentee filing the request in the course of the oral proceedings when the higher-ranking requests were held unallowable and not at the beginning. I can imagine that the patentee was reluctant to disrupt the start of the oral proceedings by filing auxiliary requests which would have been superfluous if the OD had allowed a higher-ranking request. 
• The Board also notes that the Opposition Division admitted auxiliary request 4B. The patent proprietor filed this request right after the Opposition Division decided not to admit auxiliary request 4A. The Opposition Division reasoned its decision by explaining that the request was "done in response to the novelty objections based on D6 and that its claims 1 and 2, already present in Auxiliary Request 4 (as claims 5 and 6), do not create unexpected issues" (Reasons for the decision, section II.8).
• "  auxiliary request 4B, which had also been filed during the oral proceedings, was admitted and was found to be allowable." 
• I trust that the  Board and Opposition Divisions will always consider each request on its own merits and will not be tempted to go for an easily allowable lower-ranking request. 

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.