The appeal of the opponent (hereinafter appellant) lies from the decision of the opposition division according to which the opposition against European patent 2 600 713 was rejected.
According to the contested decision, the subject-matter of claim 1 was novel over D7.
Claim 1 of the patent as granted reads as follows:
"A composition comprising:
a) a mesoparticle comprised of a poorly water soluble agricultural active ingredient having a volume-average diameter in a range of 30 ±3.0 nm to 500 ±50.0 nm; and
b) an adjuvant,
wherein the agricultural active ingredient has a water solubility of less than 1000 ±100.0 ppm, the mesoparticle is at least one of a mesocapsule and a meso-matrix particle and the adjuvant is a penetrant or a non-ionic surfactant representing a nonylphenol ethoxylate."
D7 discloses a composition for delivery of a poorly water soluble agricultural active ingredient wherein the active ingredient is at least partially included within the polymer shell of a mesocapsule, the mesocapsule having a volume-average particle diameter between 30 nm and about 500 nm. The active ingredient has a solubility in water of about 1000 ppm or less, and may be dissolved in a solvent which may include petroleum fractions or hydrocarbons, paraffinic oil, vegetable oils and esters of vegetable oils. These solvents include penetrants according to the contested patent.
D7 thus discloses the mesoparticle a) and adjuvant b) as required by claim 1.
Nevertheless, according to the contested decision, the subject-matter of claim 1 was novel over D7 for the reason that the wording of claim 1, by virtue of the penetrant and the particle being listed in two distinct sub-paragraphs, implied that the penetrant was present in the continuous phase (i.e. surrounding the particles). Since in D7 the penetrant was present inside the mesocapsule, novelty was established.
Contested claim 1 is directed to a composition defined by two separate ingredients, namely a) a mesoparticle which is a mesocapsule comprising a poorly water soluble active ingredient, and b) an adjuvant which is a penetrant. There is no mention in claim 1 of the "continuous phase" referred to by the opposition division in the contested decision.
As noted by the appellant, it is standard practice in patent claims to list the various components of a composition as separate sub-paragraphs. There is therefore nothing which can be read into claim 1, neither explicitly nor implicitly, which further defines the penetrant as being excluded from inside the mesocapsule. In particular, by virtue of the "comprising" language employed in claim 1 in defining ingredient a), contested claim 1 includes within its scope an embodiment in which the penetrant is comprised within the mesoparticle. Since it was not disputed that D7 discloses such an embodiment, claim 1 lacks novelty over this document.
The set of claims is therefore not allowable.
Reimbursement of the appeal fee
The appellant requested reimbursement of the appeal fee in accordance with Rule 103(1)(a) EPC. To support its request, the appellant submitted that in its preliminary opinion, the opposition division had indicated that contested claim 1 lacked novelty over D7. However, after hearing the arguments of the parties at oral proceedings, the opposition division unexpectedly reversed its preliminary opinion and concluded in the contested decision that contested claim 1 was novel over D7. The appellant argued that this decision was incorrect, and requested reimbursement of the appeal fee.
According to Rule 103(1)(a) EPC, the appeal fee shall be reimbursed where the Board of Appeal deems an appeal to be allowable, if such reimbursement is equitable by reason of a substantial procedural violation. In the present case however, the latter requirement is not fulfilled.
The fact that the opposition division changed its mind after having issued its preliminary opinion does not constitute a procedural violation. If it did, this would imply that once formulated, a preliminary opinion can no longer be changed. This would be diametrically opposed to the very meaning of the term "preliminary" used by the opposition division when issuing its opinion. This approach would furthermore go against the meaning of the term "opinion", which unlike a decision, can be changed at a later stage.
Furthermore, an error of judgement on substantive issues, such as the present assessment of novelty by the opposition division, is, if anything, an error in substance rather than an error related to a procedural aspect. Such an error of judgement cannot therefore be considered to represent a procedural violation.
Since no procedural violation occurred before the opposition division, the request for reimbursement of the appeal fee pursuant to Rule 103(1)(a) EPC is refused.