T1006/21 - remittal of a decision


Article 111(1) EPC, remittal, late filing of a request,Articles 12 and 13 RPBA 2020,discretionary decision of the board

The appeal of the patent proprietor (appellant) lies from the opposition division's decision to revoke European patent No. 1 810 026 (the patent).
In the decision under appeal, the opposition division found that the invention defined in claim 1 of the main request did not enjoy the right to priority from P1. Document D16 was therefore part of the state of the art under Article 54(2) EPC, and the subject-matter of claim 1 did not involve an inventive step in view of D20 and D16.
Claim 1 of the main request reads as follows:
"1. An agent which is an antibody or an antigen-binding antibody fragment that interferes with an interaction between B7-H1 and a receptor for B7-H1,
for use in the treatment of an immunosuppression characterized by an impaired function and survival of activated tumor-specific T-cells in a subject with cancer,
wherein some or all cells of the cancer express B7-H1, wherein said subject is a human and said B7-H1 is human B7-H1 (hB7-Hl),
wherein the agent binds to said receptor for hB7-Hl,
wherein the receptor is the PD-1 receptor,
wherein the cancer is a renal cell carcinoma."
The treatment recited in the claim is not the treatment of RCC but the treatment of a type of immunosuppression in subjects suffering from RCC.
P1 describes that B7-H1 expression in RCC may contribute to that type of immunosuppression in RCC patients and identifies B7-H1 as a determinant of responses to immunotherapy in these patients. The described immunotherapy is not directed to B7-H1 or any molecules interacting with B7-H1, and no treatment with an anti-PD-1 antibody is disclosed.
In opinion G 2/98, the Enlarged Board of Appeal ruled that the requirement for claiming priority of "the same invention", referred to in Article 87(1) EPC, means that priority of a previous application is to be acknowledged only if the skilled person can derive the subject-matter of the claim directly and unambiguously, using common general knowledge, from the previous application as a whole. Hence, the same requirements as for Article 123(2) EPC apply.
P1 describes, in another aspect of the invention, a method of treatment of a cancer expressing B7hH1 comprising delivering to the subject an agent that interferes with an interaction between B7-H1 and a receptor for B7-H1. It further describes that the agent can be an antibody, or an antibody fragment, that binds to a receptor for B7-H1, e.g., the PD-1 receptor.
P1 therefore concern the treatment of cancer in general and define neither that the cancer is RCC nor that an immunosuppression is to be treated. This method of treatment relate to an embodiment different from the one described above and cannot be combined without creating a new teaching. The combination of features recited in the claim is therefore not directly and unambiguously disclosed in the priority application P1, which hence does not concern the same invention as defined in the claim.
With the invention as defined in the claim not being entitled to priority from P1, document D16 forms part of the state of the art under Article 54(2) EPC, and its disclosure is relevant for the assessment of inventive step of the claim.
The opposition division found that the claimed subject-matter lacked an inventive step in view of the disclosure in documents D20 and D16. This finding of the opposition division was not challenged by the appellant in the appeal proceedings and is therefore not reviewed by the board. The subject-matter of claim 1 does not involve an inventive step (Article 56 EPC).
Both parties request remittal of the case to the opposition division. The respondents also request that the appellant's request for remittal not be considered for being late filed.
Under Article 111(1) EPC, the board may either exercise any power of the department having handed down the appealed decision or remit the case to that department for further prosecution. Whether to remit is a discretionary decision of the board which is subject to the limitations of Article 11 RPBA that remittal also requires "special reasons".
The discretionary decision to remit or not is to be taken ex officio, at any time during the appeal proceedings.
Thus, a decision on remittal is not dependent on any request by the parties and must be taken even in the absence of such a request. Any request for remittal made by a party is therefore not subject to the provisions of Articles 12 and 13 RPBA 2020.
Rather, Articles 12 and 13 RPBA 2020 serve to take account of changes in the facts or the subject-matter of the appeal proceedings ("amendments" within the meaning of Articles 12(4) and 13(1) and (2) RPBA), within narrow limits. These provisions are thus directed at (claim) requests or (allegations of) facts and evidence, i.e. at substantive issues, objections and related arguments.
In contrast, procedural requests are not amendments within the meaning of Articles 12(4) and 13(1) and (2) RPBA. They can therefore be made at any time during the appeal proceedings and must be considered by the board, regardless of when they are made.
Consequently, the question of the late filing of the appellant's request for remittal, as raised by the respondents, cannot arise in this case or in other circumstances. Rather, the board must decide ex officio whether the case should be remitted, irrespective of any request of the parties.
In the exercise of its ex officio discretion in these appeal proceedings, the board does not see any reasons, let alone any "special reasons", in favour of a remittal. The only issues to be dealt with in these appeal proceedings were priority ("same invention") and inventive step, i.e. the same issues that were dealt with in the appealed decision, and these could be answered directly by the board, in the interest of procedural economy, without prejudice to the rights of the parties to be heard.
The appeal is dismissed.