New Decisions of the Technical Boards of Appeal. Dr. Leonard Werner-Jones Dr. Ursula Kinkeldey (Retired Chairwoman Board of Appeal)

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1 New Decisions of the Technical Boards of Appeal Dr. Leonard Werner-Jones Dr. Ursula Kinkeldey (Retired Chairwoman Board of Appeal) 1 Life Science IP Seminar 2017

2 EPO Board of Appeal Statistics Technical Cases at the EPO Board of Appeal Cases 2 Life Science IP Seminar 2017

3 EPO Case Law Select EPO Board of Appeal Cases : publication date of documents; public availability; novelty; sufficiency of disclosure; clarity; claim interpretation; added matter; admissibility of late filed facts, evidence, and arguments; addmissibilty of appeals; errors in the text of a patent as granted; renewal fees; etc. Novelty: T 437/14 and T 2369/10. Sufficiency: T 1727/12, T 2220/14, T 1329/11, T 1164/11, T 1846/10, and T 437/14. prima facie relevance: G 1/84, G 3/14, T 2542/10, T 1119/05, and T 971/11. Admissibility of Late Filed Facts, Evidence, and Arguments: T 2471/13, T 450/13, T 241/10, T 2393/13, T 2054/11. T 1621/09, and T 55/11. 3 Life Science IP Seminar 2017

4 EPO Case Law. **Immediately effective starting on 1 July Life Science IP Seminar 2017

5 EPO Case Law Article 53(b) EPC European patents shall not be granted in respect of: (b) plant or animal varieties or essentially biological processes for the production of plants or animals. Rule 27(b) EPC Biotechnological inventions shall also be patentable if they concern: (b) plants or animals if the technical feasibility of the invention is not confined to a particular plant or animal variety. 5 Life Science IP Seminar 2017

6 EPO Case Law G2/07 and G1/08 Addressed question of Art. 53(b) EPC: essentially biological processes for the production of plants or animals Answer: If the introduction or modification of {a} trait is not the result of the mixing of the genes of the plants chosen for sexual crossing, then the process is not excluded from patentability under Article 53(b) EPC. 6 Life Science IP Seminar 2017

7 EPO Case Law G2/12 and G2/13 (Tomato II and Broccoli II) In the same cases as previously addressed for G2/07 and G1/08, the claims were later reduced to productby-process claims. Question: is a claim directed to plants or plant material other than a plant variety allowable even if the only method available at the filing date for generating the claimed subject-matter is an essentially biological process for the production of plants disclosed in the patent application? 7 Life Science IP Seminar 2017

8 EPO Case Law G2/12 and G2/13 (Tomato II and Broccoli II) Answer: The exclusion of essentially biological processes for the production of plants in Article 53(b) EPC does not have a negative effect on the allowability of a product claim directed to plants or plant material such as a fruit. 8 Life Science IP Seminar 2017

9 EPO Case Law European Commission patentability of such products runs into potential conflict with the legal protection provided to plant varieties under EU plant variety legislation as regards access to genetic resources December 2015, EU Parliament asked the European Commission to comment on the patentability of products derived from essentially biological processes. 9 Life Science IP Seminar 2017

10 EPO Case Law 10 Life Science IP Seminar 2017

11 EPO Case Law 11 Life Science IP Seminar 2017

12 EPO Case Law EPO EU 98/44/EC 98/44/EC G2/07 & G1/08 G2/12 & G2/13 Stay of Cases Admin. Council European Commission National Courts CJEU Implementing Regulations 12 Life Science IP Seminar 2017

13 EPO Case Law Article 53(b) EPC European patents shall not be granted in respect of: (b) plant or animal varieties or essentially biological processes for the production of plants or animals. Rule 27(b) EPC Biotechnological inventions shall also be patentable if they concern: (b) without prejudice to Rule 28, paragraph 2, plants or animals if the technical feasibility of the invention is not confined to a particular plant or animal variety. 13 Life Science IP Seminar 2017

14 EPO Case Law Rule 28(2) EPC (2) Under Article 53(b), European patents shall not be granted in respect of plants or animals exclusively obtained by means of an essentially biological process. 14 Life Science IP Seminar 2017

15 EPO Case Law EPO Press Release 15 Life Science IP Seminar 2017

16 EPO Case Law Tomatoes and Broccoli Open discussion and comments: Dr. Kinkeldey 16 Life Science IP Seminar 2017

17 Novelty Novelty ( ) Novelty: T 437/14 non-enabled prior art T 2369/10 medical use device claims 17 Life Science IP Seminar 2017

18 Novelty Novelty: T 437/14 (*Decision from 17 October 2016) Claim 1 of EP B1: 1. Phosphorescent organometallic compound of formula L 2 IrX, wherein L and X are inequivalent bidentate ligands, X is a monoanionic bidentate ligand; and the L ligands are monoanionic bidentate ligands each coordinated to Ir (iridium) through an sp 2 hybridized carbon and a heteroatom. 18 Life Science IP Seminar 2017

19 Novelty Novelty: T 437/14 (*Decision from 17 October 2016) Point of the Reasons for the Decision : In this respect the board has no reason to doubt the proprietor's explanation during the oral proceedings that the reaction of D6 was kinetically driven and that the rate-determining step was the first step in the reaction scheme depicted in D6, i.e. the reaction of Iracac3 to Irppyacac2, with the subsequent substitution of the further two acetylacetonate ligands being so fast that an isolation of the "intermediate Irppy2acac was impossible. (emphasis added) * T392/06 and T 327/92: intermediate product is enabled if it is a "discrete product vs. the "transient product of D6. 19 Life Science IP Seminar 2017

20 Novelty Novelty: T 2369/10 (*Decision from 13 November 2015) Claim 1 of EP Main Request in Appeal: Neurostimulator system for treating a patient having a substance addiction to alleviate a symptom of the substance addiction, the neurostimulator system comprising an electrode configured for directly coupling to a cranial nerve of the patient and applying an electrical signal to said cranial nerve. 20 Life Science IP Seminar 2017

21 Novelty Novelty: T 2369/10 (*Decision from 13 November 2015) Point 7.5 of the Reasons for the Decision : The Board has failed to find any mention of medical uses of devices in the Travaux Préparatoires of the EPC 2000, even although Article 54 was subject to a major revision in which the practice of G 5/83 was formally codified in Article 54(5) EPC. (emphasis added) Point 8.1 of the Reasons for the Decision : In the present case, the Board holds that, having regard to the wording of Article 54(4),(5) EPC, the ordinary meaning of this Article shall not be extended so as to include something which is not explicitly provided for. (emphasis added) 21 Life Science IP Seminar 2017

22 Novelty Novelty ( ) Open discussion and comments: Dr. Kinkeldey 22 Life Science IP Seminar 2017

23 Sufficiency Sufficiency ( ) Sufficiency: T 1727/12 burden of proof / working requirement T 2220/14 burden of proof / working requirement T 1329/11 burden of proof / working requirement T 1164/11 burden of proof / working requirement T 1846/10 working requirements / undue burden T 0437/14 functional features 23 Life Science IP Seminar 2017

24 Sufficiency Sufficiency: T 1727/12 (*Decision from 09 November 2015) Claim 1 of EP B1: 1. A tape drive comprising two stepper motors (14,15), two tape spool supports (8,12) on which spools of tape (7,11) may be mounted, each spool being drivable by a respective one of said stepper motors (14, 15), and a controller (17) for controlling the energisation of the motors [ ], wherein the controller (17) is operative to energise both motors (14, 15) to drive the spools of tape [ ] and to control the motors (14, 15) to maintain the monitored tension between predetermined limits. 24 Life Science IP Seminar 2017

25 Sufficiency Sufficiency: T 1727/12 (*Decision from 01 February 2016) Point 1.1 of The Reasons for the Decision : A principle intrinsic to EPO proceedings is that the party who raises an objection bears the burden of proving it (see "Case Law of the Boards of Appeal of the EPO", 7th edition, 2013, III.G.5.1.1). The application of this principle to opposition proceedings leads to the conclusion that the burden of proof in respect of the grounds for opposition raised by an opponent lies on the opponent. (emphasis added) 25 Life Science IP Seminar 2017

26 Sufficiency Sufficiency: T 2220/14 (*Decision from 09 November 2015) Claim 1 of EP B1: 1. A method of modifying an endogenous immunoglobulin variable region gene locus in an isolated mouse embryonic stem (ES) cell [ ], said method comprising: a) obtaining a large cloned genomic fragment [ ]; b) using bacterial homologous recombination to genetically modify the cloned genomic fragment of (a) to create a large targeting vector for use in a mouse ES cell (LTVEC); c) introducing the LTVEC of (b) into a mouse ES cell [ ]; and d) using a quantitative assay to detect modification of allele (MOA) in the mouse ES cell of (c) [ ]. 26 Life Science IP Seminar 2017

27 Sufficiency Sufficiency: T 2220/14 (*Decision from 09 November 2015) Point 63. of The Reasons for the Decision : The respondents have not presented convincing evidence that this would be the case, their main argument being that Example 3 is a "prophetic example. However, there is no requirement in the EPC that, either at the priority or filing date, the applicant must have carried out the claimed invention. The requirement of Article 83 EPC is that a person skilled the art, following the teachings in the application as filed supplemented with his/her common general knowledge and with a reasonable amount of experimentation, including some trial and error, would be able to carry out the invention as claimed at the relevant date. (emphasis added) 27 Life Science IP Seminar 2017

28 Sufficiency Sufficiency: T 1329/11 (*Decision from 19 November 2015) Claim 1 of EP B1: 1. A method for diagnosing the risk of a patient, who shows no symptoms of a cardiovascular disease according to the NYHA classification and who has no history of cardiovascular complication, of suffering from a cardiovascular complication as a consequence of a future increase intravasal volume, comprising the steps of a) measuring, in vitro, the level of a natriuretic peptide from the group of ANP, or NT-proANP and/or BNP, or NT-proBNP b) diagnosing the risk of the patient by comparing the measured level to at least one known level(s) associated with different grades of risk in a patient. 28 Life Science IP Seminar 2017

29 Sufficiency Sufficiency: T 1329/11 (*Decision from 19 November 2015) Point 3.9 of The Reasons for the Decision : The board also cannot accept the respondents' argument that the claimed invention was sufficiently disclosed because the appellant did not present verifiable facts that it did not work. Although generally, the burden of proof in the framework of sufficiency of disclosure lies with the appellant, this principle does not apply to cases like the present one, where the application as filed does not provide a single example or other technical information from which it is plausible that the claimed invention can be carried out. (emphasis added) 29 Life Science IP Seminar 2017

30 Sufficiency Sufficiency: T 1164/11 (*Decision from 18 February 2015) Claim 1 of EP A1: 1. A medical apparatus for cutaneous administration of medicaments comprising: - a supporting frame (100); - an energy emitter (9) in engagement with the frame (100) and active on the molecules of at least one medicament to cause penetration of same into a skin region to be treated (10); and - a medicamentous solution (3) adapted to be positioned between the energy emitter (9) and the skin region to be treated (10), said solution (3) comprising a matrix containing said medicament, characterized in that said energy emitter (9) is not an emitter of electric energy. 30 Life Science IP Seminar 2017

31 Sufficiency Sufficiency: T 1164/11 (*Decision from 18 February 2015) Point 2 of The Reasons for the Decision : The requirement of sufficiency of disclosure in Article 83 EPC is based on the consideration that the grant of a patent is only justified if the information comprised in the patent application and generally available technical knowledge enable the skilled person successfully to put into practice the subjectmatter of the claimed invention. It is not the purpose of the patent system to grant a monopoly for technical speculations that cannot be realised at the time of filing. (emphasis added) 31 Life Science IP Seminar 2017

32 Sufficiency Sufficiency: T 1846/10 (*Decision from 12 March 2015) Claim 1 of EP B1: 1. A method for producing a live vaccine against L. intracellularis comprising the steps: (1) cultivating the L. intracellularis bacteria to obtain culture cells infected with L. intracellularis; (2) incubating said infected cells at an oxygen concentration of less than about 18 percent while maintaining said infected cells in suspension; (3) harvesting the L. intracellularis bacteria; and (4) admixing the L. intracellularis bacteria with an acceptable pharmaceutical carrier. 32 Life Science IP Seminar 2017

33 Sufficiency Sufficiency: T 1846/10 (*Decision from 12 March 2015) Point 43 of The Reasons for the Decision : the board, having regard to the facts and arguments presented to it, concludes that no evidence has been provided that by following the teaching of the contested patent the person skilled in the art would succeed in producing an attenuated L. intracellularis strain. On the contrary, example 5 constitutes evidence that he would fail and thus raises serious doubts that the invention can in fact be carried out by the average person skilled in the art without undue experimentation or inventive skills. (emphasis added) 33 Life Science IP Seminar 2017

34 Sufficiency Sufficiency: T 437/14 (*Decision from 17 October 2016) Claim 1 of EP B1: 1. Phosphorescent organometallic compound of formula L 2 IrX, wherein L and X are inequivalent bidentate ligands, X is a monoanionic bidentate ligand; and the L ligands are monoanionic bidentate ligands each coordinated to Ir (iridium) through an sp 2 hybridized carbon and a heteroatom. (Emphasis added) 34 Life Science IP Seminar 2017

35 Sufficiency Sufficiency: T 437/14 (*Decision from 17 October 2016) Point 4.1 of the Reasons for the Decision : Sufficiency of disclosure may for instance be acknowledged if all embodiments defined by the structural feature(s) of the claim also meet the claimed functional requirement(s). If this is not the case, sufficiency may still be acknowledged if the common general knowledge at the priority date of the patent, or the patent itself, provides the skilled person with sufficient guidance on how to select those compounds, out of the host of compounds defined by the structural feature(s) of the claim, that also meet the claimed functional requirement(s). (emphasis added) 35 Life Science IP Seminar 2017

36 Sufficiency Sufficiency: T 437/14 (*Decision from 17 October 2016) Point 4.4 of the Reasons for the Decision : Firstly, the patent contains numerous examples of specific compounds having structures as required by claim 1 which are phosphorescent (figures 8, 10, 12, 14, 16, 17, 19, 21, 25, 26, 27, 29, 31, 33, 35, 36 and 37). These examples give the skilled person at least some idea of suitable structures which fulfill the functional requirement of claim 1 of being phosphorescent. (emphasis added) 36 Life Science IP Seminar 2017

37 Sufficiency Sufficiency: T 437/14 (*Decision from 17 October 2016) Point 4.5 of the Reasons for the Decision : Secondly, the patent even provides specific selection rules on how to identify ligands L and X within the structural definition of claim 1 that lead to phosphorescent compounds..(emphasis added) 37 Life Science IP Seminar 2017

38 Sufficiency Sufficiency: T 437/14 (*Decision from 17 October 2016) Point 4.6 of the Reasons for the Decision : Consequently, no undue burden is needed to select those complexes falling under the structural definition given in claim 1 that are phosphorescent. 38 Life Science IP Seminar 2017

39 Sufficiency Sufficiency ( ) Open discussion and comments: Dr. Kinkeldey 39 Life Science IP Seminar 2017

40 Admissibility of Late Filed Facts, Evidence, and Arguments Admissibility of Late Filed Facts, Evidence, and Arguments: prima facie relevance Rules of Proceedure for the Boards of Appeal (RPBA) Timing 40 Life Science IP Seminar 2017

41 prima facie relevance prima facie relevance? G1/84 - point 3 of the Reasons for the Decision : Starting at the correct point, therefore, it becomes immediately apparent that the elaborate provisions in the EPC for substantive examination and opposition are designed to ensure that only valid European patents should be granted and maintained in force, so far as it lies within the power of the European Patent Office to achieve this.. (emphasis added) (*G1/84: Decision from 24 July 1985.) 41 Life Science IP Seminar 2017

42 prima facie relevance prima facie relevance (GL E-V, 2) (GL E-V, 2): If examination of late-filed grounds for opposition, late-filed facts or late-filed evidence reveals without any further investigation (i.e. prima facie) that they are relevant, i.e. that the basis of the envisaged decision would be changed, then the competent department has to take such grounds, facts or evidence into consideration no matter what stage the procedure has reached and whatever the reasons for belated submission. In that case, the principle of examination by the EPO of its own motion under Art. 114(1) takes precedence over the possibility of disregarding facts or evidence under Art. 114(2) (see T 156/84). Note, however, the limits on the obligation to undertake further examinations as set out in E-V, 1.2. (emphasis added) (GL E-V, 2 : Current Guidelines from November 2016) 42 Life Science IP Seminar 2017

43 prima facie relevance prima facie relevance (GL E-V, 1.2) (GL E-V, 1.2): However, the obligation to undertake such examination should be kept within limits in the interests of procedural expediency. For example, in opposition proceedings, an offer to prove that an alleged public prior use took place should not be taken up if the opponent making such an allegation has ceased to participate in the proceedings and the necessary evidence cannot be easily obtained at a reasonable cost. (emphasis added) (GL E-V, 1.2 : Current Guidelines from November 2016) 43 Life Science IP Seminar 2017

44 prima facie relevance prima facie relevance (G 3/14) G 3/14 paragraph [0080] of the Reasons for Decision : However, the Enlarged Board cannot go as far as the submission (point VI(b), above), citing G 1/84 (OJ EPO 1985, 299), at point 3 of the Reasons, that "the elaborate provisions in the EPC for substantive examination and opposition are designed to ensure that only valid European patents should be granted and maintained in force" by the EPO, not least because the Enlarged Board added "... sofar as it lies within the power of the European Patent Office to achieve this. (emphasis added) (*G3/14: Decision from 24 March 2015.) 44 Life Science IP Seminar 2017

45 prima facie relevance prima facie relevance (G 3/14) G 3/14 paragraph [0080] of the Reasons for Decision :.Opposition proceedings are not designed as a procedure for generally amending (or revoking) patents which contain any kind of defect. This is amply demonstrated by the fact that failure to satisfy the requirements of Article 84 EPC is not a ground for opposition. As has been said many times (e.g., G 1/84, point 9 of the Reasons), opposition proceedings are not designed to be a continuation of examination proceedings. (emphasis added) 45 Life Science IP Seminar 2017

46 prima facie relevance prima facie relevance Second Instance (T 2542/10) (*Decision from 09 October 2012) Section Reasons of the Decision : From the above, it follows that a document filed late in opposition-appeal proceedings may be admitted by the board, in particular in a situation where it is prima facie prejudicial to the maintenance of the patent (see also T 1002/92, OJ EPO 1995, 605, headnote; T 212/91 of 16 May 1995, point 2; and T 931/06 of 21 November 2008, point 3). (emphasis added) 46 Life Science IP Seminar 2017

47 prima facie relevance prima facie relevance Second Instance (T 2542/10) (*Decision from 09 October 2012) Section Reasons of the Decision : From the above = According to decision G 1/84 of the Enlarged Board of Appeal (OJ EPO 1985, 299, point 3, first sentence)... the elaborate provisions in the EPC for substantive examination and opposition are designed to ensure that only valid European patents should be granted and maintained in force, so far as it lies within the power of the European Patent Office to achieve this. This is confirmed by decision T 156/84 (OJ EPO 1988, 372), where the following is stated in the headnote: "The principle of examination by the EPO of its own motion (Article 114(1) EPC) takes precedence over the possibility of disregarding facts or evidence not submitted in due time. This follows from the EPO s duty vis-a-vis the public not to grant or maintain patents which it is convinced are not legally valid. (emphasis added) 47 Life Science IP Seminar 2017

48 prima facie relevance prima facie relevance Second Instance (T2542/10) (*Decision from 09 October 2012) Section Reasons of the Decision : In the present case, example XV of document D16 is clearly novelty-destroying to the subject-matter of the main request (for details, see point 4 below). In view of its relevance, D16 therefore has to be admitted into the proceedings. (emphasis added) 48 Life Science IP Seminar 2017

49 prima facie relevance prima facie relevance Second Instance (T 724/08) (*Decision from 09 October 2012) Section Reasons of the Decision (summarized from the German): The board has the discretion not to admit documents which are cited as novelty-destroying for the first time in appeal The board can, but does not need to consider any prima facie relevance when exercising its discretion to admit or not to admit these documents. (emphasis added) 49 Life Science IP Seminar 2017

50 prima facie relevance prima facie relevance Second Instance (T 1119/05) (*Decision from 08 January 2008) T 1119/05 - Section 3.2 of Reasons for the Decision : A board of appeal should only overrule the way in which a department of first instance has exercised its discretion if the board concludes it has done so according to the wrong principles, or without taking into account the right principles, or in an unreasonable way (see Case Law of the Boards of Appeal of the European Patent Office, 5th edition 2006, VII.D,6.6). The question therefore arises whether the Opposition Division exercised its discretion properly according to the above stated criteria. (emphasis added) 50 Life Science IP Seminar 2017

51 prima facie relevance prima facie relevance Second Instance (T 0971/11) (*Decision from 04 March 2016) T 0971/11 Section 1.1 of Reasons for the Decision : Under Article 114(2) EPC 1973 it is at the opposition division s discretion not to admit late-filed documents. It is well established case law that these are to be examined as to their relevance by the department of first instance; late-filed facts and evidence and supporting arguments should then be exceptionally admitted into the proceedings if, prima facie, there are reasons to suspect that such late-filed documents prejudice the maintenance of the European patent in suit. (emphasis added) 51 Life Science IP Seminar 2017

52 prima facie relevance prima facie relevance Second Instance (T 0971/11) (*Decision from 04 March 2016) T 0971/11 Section 1.1 of Reasons for the Decision : A board of appeal should only overrule the way in which a department of first instance has exercised its discretion when deciding on a particular case if it concludes that it has done so according to the wrong principles, or without taking into account the right principles, or in an unreasonable way. This rule also applies with respect to opposition division decisions on the admission of late-filed submissions. (emphasis added) 52 Life Science IP Seminar 2017

53 prima facie relevance prima facie relevance Second Instance (T 0971/11) (*Decision from 04 March 2016) T 0971/11 Section 1.1 of Reasons for the Decision : It is generally not the function of a board of appeal to review all the facts and circumstances of the case as if it were in the place of the department of first instance, in order to decide whether or not it would have exercised such discretion in the same way (cf. cases cited in Case Law of the Boards of Appeal of the European Patent Office, 7th Edition, 2013, IV.C.1.3.3). (emphasis added) 53 Life Science IP Seminar 2017

54 prima facie relevance prima facie relevance Second Instance (T 0971/11) (*Decision from 04 March 2016) T 0971/11 Section 1.3 of Reasons for the Decision : In the judgement of the present board, a document which would have been admitted into appeal proceedings if it had been filed for the first time at the outset of those proceedings should not, however, be held inadmissible for the sole reason that it was already filed before the department of first instance (and not admitted).... (emphasis added) 54 Life Science IP Seminar 2017

55 prima facie relevance prima facie relevance ( ) Open discussion and comments: Dr. Kinkeldey 55 Life Science IP Seminar 2017

56 Late Filing Legal Provisions Article 114(1) EPC In proceedings before it, the European Patent Office shall examine the facts of its own motion; it shall not be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought. Article 114(2) EPC The European Patent Office may disregard facts or evidence which are not submitted in due time by the parties concerned 56 Life Science IP Seminar 2017

57 Late Filing Legal Provisions Article 12(2) RPBA The statement of grounds of appeal (appellant) and the reply (respondent) shall contain a party's complete case. Article 12(4) RPBA Board can hold inadmissible facts and evidence which could have been presented or were not admitted in the first instance proceedings or which do not meet the requirements of Article 12(2) of being complete 57 Life Science IP Seminar 2017

58 Late Filing Legal Provisions Article 13(1) RPBA Board has discretion not to admit any amendment to a party's case after it has filed its grounds of appeal or reply. The discretion shall be exercised in view of inter alia the complexity of the new subject matter submitted, the current state of the proceedings, and the need for procedural economy 58 Life Science IP Seminar 2017

59 Late Filing Legal Provisions Article 13(3) RPBA Amendments after oral proceedings have been arranged shall not be admitted if they raise issues which the Board or the other party or parties cannot reasonably be expected to deal with without adjournment of the oral proceedings 59 Life Science IP Seminar 2017

60 Late Filing Legal Provisions Decision of the AC to amend the Rules of Procedure CA/133/02 The intended overall effect of the amendments in Articles 12 and 13 is to prevent "ping pong" submissions and "salami" tactics in written proceedings and to provide the Board (and the rapporteur in particular) with an appeal file containing one comprehensive submission from each party. Thus, by way of Article 12, the moment in time when a party s case is considered to be complete... is fixed objectively by the rules and no longer subject to the procedural strategy of the parties. 60 Life Science IP Seminar 2017

61 Late Filing Legal Provisions Decision of the AC to amend the Rules of Procedure CA/133/02 The criteria of Article 13 for the admission of new subject matter take account of the right of the other parties to a fair procedure and is aimed at the more pragmatic and reliable conduct of proceedings and a reduction in the number of adjournments and remittals Life Science IP Seminar 2017

62 Late Filing Legal Provisions Art. 12(4) Art. 13(1) Art. 13(3) Art. 12(2) Statement of grounds of appeal Reply Summons Oral Proceedings 62 Life Science IP Seminar 2017

63 Late Filing Legal Provisions Late Filing Legal Provisions ( ) Open discussion and comments: Dr. Kinkeldey 63 Life Science IP Seminar 2017

64 Late Filing Late Filing: T 736/99 (*Decision from 20 June 2002) Point of The Reasons for the Decision : Generally the boards have applied the criteria of relevance and procedural complication to help resolve the conflict between these incommensurables, with the hurdle of relevance set higher the later the submission. In some recent decisions the criterion of complexity of the legal and technical issues raised by the late submission has been relied on as an additional or alternative criterion (emphasis added) 64 Life Science IP Seminar 2017

65 Late Filing Late Filing: T 2471/13 (*Decision from 13 March 2016) Point 1.1 of The Reasons for the Decision : D3 was cited for the first time in the appellant s statement of grounds, and a hardcopy of D3 was filed together with said statement. The admittance of D3 into the proceedings is thus subject to the board s discretion under Article 114(2) EPC and Article 12(4) RPBA. (emphasis added) 65 Life Science IP Seminar 2017

66 Late Filing Late Filing: T 2471/13 (*Decision from 13 March 2016) Point 1.1 of The Reasons for the Decision : The appellant argued that D3 had been cited erroneously in the statement setting out the grounds for opposition. It had been intended to cite D3, and reference had been made to the relevant passages of the "correct" document D3`. (emphasis added) 66 Life Science IP Seminar 2017

67 Late Filing Late Filing: T 2471/13 (*Decision from 13 March 2016) Point 1.8 of The Reasons for the Decision : Taking into account all the above circumstances, the board decided not to admit document D3 into the proceedings, irrespective of its potential relevance (Article 114(2) EPC and Article 12(4) RPBA). (emphasis added) 67 Life Science IP Seminar 2017

68 Late Filing Late Filing: T 0450/13 (*Decision from 24 March 2015) Point of The Reasons for the Decision : Unlike the attack on the basis of D2, D28 was cited against novelty in the statement of grounds of appeal. The filing of this document thus meets the requirement of Article 12(2) RPBA. However, such a document may be not admitted if it could have been, but was not, filed during the opposition proceedings (Article 12(4) RPBA). (emphasis added) 68 Life Science IP Seminar 2017

69 Late Filing Late Filing: T 241/10 (*Decision from 07 May 2014) Catchword: The board has no power under Article 12(4) RPBA to hold a document filed with the statement of grounds of appeal inadmissible if the filing of that document was a legitimate reaction to the submission of amended claims by the patent proprietor shortly before the first-instance oral proceedings and the opponent could not have been reasonably expected to present that document in the proceedings before the opposition division (see points 2 to 7). (emphasis added) 69 Life Science IP Seminar 2017

70 Late Filing Late Filing: T 2393/13 (*Decision from 05 February 2016) Point 5 of The Reasons for the Decision (summarized from the German): Article 12(4) RPBA does not only require that facts and evidence be submitted at the appropriate point in time but also that they meet the requirements of Article 12(2) RPBA of being complete. In this case, the board therefore did not admit a public prior use since it was not sufficiently substantiated. 70 Life Science IP Seminar 2017

71 Late Filing Late Filing: T 2054/11 (*Decision from 09 October 2015) Point 2 of The Reasons for the Decision (summarized from the German): If a case is amended in appeal by filing new document after the summons to oral proceedings and in particular if filed during the oral proceedings, the relevance of the document does not play a role when deciding whether it can be admitted. 71 Life Science IP Seminar 2017

72 Late Filing Late Filing: T 1621/09 (*Decision from 22 September 2011) Catchword: (a) A new argument brought forward in appeal proceedings by a party which would have the effect of amending its case, even if the argument is based on evidence and facts already in the proceedings, can only be introduced into the proceedings at the discretion of the Board of Appeal by way of an amendment under Article 13 RPBA (Point 37(a) of the Reasons). (emphasis added) 72 Life Science IP Seminar 2017

73 Late Filing Late Filing: T 55/11 (*Decision from 15 February 2016) Point 2.3 of The Reasons for the Decision : The present board considers that in deciding whether a new argument has the effect of amending a party s case within the meaning of Article 13(1) RPBA it must be established on a case-by-case basis whether the new argument is a departure from, or just a development of, the original arguments filed with the grounds of appeal or the reply thereto. This approach is in line with the analysis made in T 1621/09, see in particular point 9 of the Reasons. (emphasis added) 73 Life Science IP Seminar 2017

74 Late Filing Late Filing: T 55/11 (*Decision from 15 February 2016) Point 9 of The Reasons for the Decision : Since the arguments relied on thus constitute part of a party's case, it appears to the Board that new arguments, even when based on facts and evidence already in the proceedings, can have the effect of altering a party's case: the facts and evidence relied on can be assembled in different ways using different arguments. On the other hand, there will clearly be many situations where a new argument does not change a party s case. (emphasis added) 74 Life Science IP Seminar 2017

75 Late Filing Late Filing: T 55/11 (*Decision from 15 February 2016) Point 9 of The Reasons for the Decision : the two ways of presenting the novelty attack set out in Point VIII(a), above, are different in substance, and, in the Board s view, are different cases. Such a conclusion is very case specific (i.e., it depends very much on the specific circumstances of the appeal) but the Board reaches it taking into account in particular the fact that the two attacks are inconsistent, and the second attack is a departure from and not just a development of the first. (emphasis added) 75 Life Science IP Seminar 2017

76 Late Filing Late Filing ( ) Open discussion and comments: Dr. Kinkeldey 76 Life Science IP Seminar 2017

77 Thank you for your attention 77 Life Science IP Seminar 2017