CABINET CHAILLOT

T0737/20 - remittance of the case to the opposition division for further prosecution

Article 111(1) EPC, Article 12(2) RPBA , right to be heard under Article 113 EPC

T0737/20
The patent proprietors filed an appeal against the opposition division's decision to revoke European patent No. 2 397 155. In the decision under appeal, the opposition division held that the subject-matter of claim 1 as granted lacked novelty.
The Board, using its discretion under Article 111(1) EPC, decided not to remit the case to the opposition division for further prosecution.
According to established case law, parties have "no absolute right to have each and every matter examined at two instances". Article 111(1), second sentence, EPC, leaves it to the Board's discretion to decide on an appeal either by exercising any power conferred on the department of first instance or by remitting the case to that department.
In deciding not to remit the present case, the Board took into account that the legal and factual framework established by the decision under appeal, in which the opposition division held that the subject-matter of claim 1 as granted lacked novelty, was not significantly altered by dealing with inventive step of claim 1 of the patent as granted. This was inter alia because the opposition division had already given a preliminary view on inventive step in a communication.
The appellant raised an objection under Rule 106 EPC, concerning the fact that the Board did not remit the case to the opposition division for it to decide on inventive step. It consisted of two parts: firstly, in the appellant's view its right to be heard under Article 113 EPC was violated because of the lack of a first instance decision on inventive step, meaning that the case on inventive step was not decided by two instances; secondly Article 12(2) RPBA defined the primary object of the appeal proceedings as being to review the decision under appeal in a judicial manner. The Boards of Appeal were precluded from dealing with issues not dealt with in decisions under appeal. The fact that the present Board had refused to remit the case was a fundamental procedural violation.
There are two reasons why no violation of the right to be heard occurred in the oral proceedings.
Firstly, the appellant was heard on the issue of remittal. Indeed, it was given and took advantage of multiple opportunities to comment on whether the case should be remitted to the opposition division for further prosecution for consideration of inventive step of the patent.
Secondly, where a Board opts not to remit a case and to decide the case on the merits, there is no legal obligation under Article 113 EPC to hear the parties on this matter. The right to be heard is not an end in itself. A party must be heard on matters, whether substantive or procedural, only if these lead to decisions which could adversely affect the legitimate interest of that party.
It is settled case law that parties do not have a fundamental right to have their case examined at two levels of jurisdiction. The Board is also aware of the case law that "any party should, where possible, be given the opportunity to have two readings of the important elements of a case". However, the Board is of the view that this latter case law should not be followed in the present procedural constellation. Firstly, Article 111(1) EPC does not establish an obligation to remit a case. Secondly, there is no case law according to which a remittal is mandatory every time a Board has to consider a new element not dealt with in the first instance proceedings. Thirdly, the practice of remitting the case whenever a new element has to be considered is hardly compatible with the nature the appeal proceedings and the function of the Boards of Appeal, which have the power to decide the whole case and not only to set aside the decisions under appeal.
Not remitting the case to the opposition division for further prosecution for consideration of inventive step of claim 1 of the patent is not a fundamental procedural violation in view of Article 12(2) RPBA, which does not preclude Boards of appeal from dealing with matters not dealt with in the decision under appeal. Instead, the Boards have discretion on this under Article 111(1) EPC.
Document D5, closest prior art, is an abstract concerning the problem of "virus-specific CD8 T cells [that] become functionally tolerant to viral antigens during chronic infection, a state referred to as exhaustion".
The difference between document D5 and the claimed subject-matter is the provision of an agent for the treatment of the persistent viral infections specifically named in the claim.
The problem to be solved by the claimed invention was the provision of an agent for the treatment of persistent infection with any of the following viruses: hepatitis virus, a herpes virus, cytomegalovirus, Epstein-Barr virus, herpes simplex virus 1, herpes simplex virus 2, human herpes virus 6, varicella-zoster virus, hepatitis B virus, hepatitis C virus, papilloma virus, parvovirus B19, polyomavirus BK, polyomavirus JC, human T cell leukemia virus I, and human T cell leukemia virus II.
Document D5 concludes that "...that reversing CD8 T cell exhaustion is possible by blocking the PD-1/PD-L1 pathway and may provide a useful therapeutic strategy for the treatment of chronic viral infection". The skilled person would have understood that chronic viral infection is a form of persistent viral infection. From their common general knowledge they would have known that the viral infections recited in the claim were known as being likely to become chronic. Thus, it must be concluded that the claimed subject-matter was obvious in the light of the disclosure in document D5 alone.
The appellant's line of argument was that the skilled persons would not have had a reasonable expectation that these compounds would represent an effective treatment for these persistent viral infections. In its view, document D5 was only an abstract submitted for a scientific meeting and was not peer reviewed. Moreover, it lacked the experimental evidence to back up its conclusions. In its view, the skilled person would not have had enough confidence in the information given.
The Board does not find these arguments persuasive. Firstly, while document D5 is indeed a meeting abstract, it was published in a reputable journal and its authors were reputable scientists from well known institutions.
Secondly, the fact the document D5 does not include experimental results would not automatically be regarded as a lack of reliability of the information provided. The skilled person would not have expected an abstract to contain detailed experimental protocols or results.
In view of the above considerations, the Board concludes that the subject-matter of claim 1 of the patent was obvious to the skilled person and therefore lacks an inventive step.
The appeal is dismissed.

 

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