UK: Preparation, Preparation, Preparation: Lessons To Be Learnt From EPO Decision R2/19

R2/19 is a recently published decision from the Enlarged Board of Appeal (EBA) of the European Patent Office (EPO). Although it breaks little new ground, it has highlighted yet again the importance of patent proprietors being properly prepared when defending a patent during post-grant proceedings.

In this article, we look at specific lessons that can be learnt by patent proprietors from this decision.

Background

European Patent No. 1793994 was granted to Plastic Suppliers, Inc. (the 'Patent Proprietor') on 19 October 2011 with claims relating to films made from polylactic acid (PLA) polymers, a useful plastics material that degrades into non-toxic and naturally occurring materials. The patent was maintained in amended form after opposition by Infiana Germany GmbH & Co. KG (the 'Opponent'), but the real lessons come from the appeal of that decision (T589/15) filed by the Opponent (also the 'Appellant'), which led to revocation of the patent, and subsequent petition for review filed by the Patent Proprietor (also the 'Petitioner').

There were two claims of specific importance to the appeal proceedings:

• claim 1, a method claim, which included the features "wherein the plasticiser is a lactide" and that the final film "comprises (10% of plasticiser"; and
• claim 13 (as it was numbered after amendments made in the opposition), a product-by-process claim, which referred to the method of claim 1.

In the Main Request filed during the appeal, the Patent Proprietor requested the claims be maintained in the amended form reached on conclusion of the opposition. A further seven Auxiliary Requests were also filed, in three of which claim 13 was included as a product-by-process claim, and in the remaining four, claim 13 had been re-cast as an independent product claim including the two features from claim 1 noted above relating to the plasticiser.

The arguments submitted by the Opponent/Appellant during the appeal focussed on claim 13 lacking an inventive step in light of a prior art document 'G3', which disclosed both PLA films and plasticiser levels as low as 1%, but in separate examples.

Following revocation of the patent on appeal, a petition for review by the EBA was filed by the Patent Proprietor/Petitioner alleging that each of a fundamental violation of the right to be heard under Article 113 EPC and an additional procedural fundamental defect during the appeal proceedings had occurred (under Articles 112a(2)(c) and (d) EPC respectively). Only the former ground was pursued by the Patent Proprietor/Petitioner in the subsequent Oral Proceedings:

"Whereas the [appeal] Board had expressed its preliminary opinion in support of the opposition division's findings that document G3 teaches away from reducing the amount of lactides to less than 10 percent as claimed in claim 13 of the main request, it then decided that the claims of all requests on file lacked inventive step over examples 34-39 of document G3 because there was no evidence that it was not possible to prepare a blown film using less than 10 percent lactide as plasticizer. However, if the appellant-opponent or the Board had an issue with that, they should have raised it in a timely manner to allow the petitioner a proper defence. Not doing so amounted to a fundamental violation of the petitioner's right to be heard under Article 113(1) EPC." [emphasis added]

In other words, the Patent Proprietor/Petitioner alleged that its right to be heard in the appeal proceedings was fundamentally violated because, without putting it to the Patent Proprietor/Petitioner, the appeal Board considered the absence of evidence to support the Patent Proprietor's/Petitioner's argument (that PLA blown films with low lactide content (10 percent or less) could not be manufactured by the method of G3) a reason for rejecting said argument and, ultimately, for revoking the patent.

On a thorough review of all the facts and exchanges made during the appeal, the EBA concluded that "there is no doubt that the petitioner had the opportunity to state their case in respect of all the issues on which the decision under review was taken in respect of the relevance of the teaching of document G3 for the assessment of inventive step of the claimed subject-matter" and that "it was for the petitioner to provide evidence for the alleged unsuitability of the method of document G3 and that the failure to do so could be held against the petitioner".

Consequently, the petition for review was unanimously rejected by the EBA as being clearly unallowable. The patent therefore remains revoked.

Lessons

As a patent proprietor, the first lesson to be learnt from R2/19 is to beware giving the tentative conclusions reached in an opposition or appeal preliminary opinion too much weight. On conclusion of the appeal, it was decided that product-by-process claim 13 was not inventive over G3, despite the (contrary) positive decision in the opposition and a similarly positive view expressed in the preliminary opinion on appeal. In an attempt to avoid revocation of the patent, the Patent Proprietor argued in support of the inventiveness of claim 13, but these arguments were only submitted for the first time in the hearing. A new auxiliary request deleting claim 13 was also submitted during the appeal hearing as a final attempt to maintain the patent, but this was deemed late-filed and thus inadmissable.

Consequently, claim 13 in the Main Request and in all of the admitted Auxiliary Requests was found to lack an inventive step. Had the Patent Proprietor submitted all of its arguments and potential auxiliary requests prior to the appeal hearing, it may have obtained a different result.

Following on from the appeal, during the petition for review, the Patent Proprietor submitted that it did not have an opportunity to defend itself, and that it had not prepared evidence supporting its inventive step arguments for claim 13 because it had not known it would need to. Both parties should remember that, when submitting arguments claiming certain statements to be true, particularly during post-grant proceedings, submission of supporting evidence should always be considered and carried out where possible. In this case, the Patent Proprietor had argued that a process described in G3 would not have been suitable for making a plastic film according to claim 13. However, there was no evidence in the patent application as filed to support this argument, and none was submitted at any stage during post-grant proceedings.

As we learn from R2/19, neither being unprepared during an appeal you expect to go in your favour nor failing to sufficiently support your arguments with evidence would be considered a failure of the right to be heard.

A third lesson from R2/19 is that a party to proceedings should check the text of an EPO decision carefully. If the written decision contains inconsistencies or does not accurately reflect the findings of the hearing, be prepared to object. In R2/19, the Proprietor's/Petitioner's failure to object to a paragraph in the appeal decision that contradicted its arguments was ultimately held against it.

Lastly, this case should serve as a reminder of the risks involved in relying on late-filed submissions. An appeal hearing is not the time to drop objectionable claims for the first time! Had the Patent Proprietor tried to pursue method claims only (based on claim 1), even as a final auxiliary request, it may well still be in possession of a granted patent.