The appeal of the applicant (appellant) lies from a decision of an examining division, refusing the European patent application No. 09 757 250.7 with the title "Pestivirus replicons providing an RNA-based viral vector system".
In the decision under appeal, the examining division found that the amendments introduced into claim 1 offended against Article 123(2) EPC. The examining division concluded that the combination of two features resulted in the creation of subject-matter that goes beyond the content of the application as filed.
During the oral proceedings, the appellant filed a set of claims that replaced the claims of the main request.
Claim 1 of the present main request reads as follows:
"1. A particulate delivery vehicle comprising an RNA pestivirus replicon lacking essential codons or all codons for one or more structural proteins required for the formation of infectious virus, and carrying a foreign gene, wherein said pestivirus replicon is encapsulated inside the delivery vehicle to enhance protection of the RNA and to deliver the RNA pestivirus replicon to the cytoplasm of mammalian cells for replication and translation of the RNA pestivirus replicon, including said foreign gene, in the cytoplasm."
The amendments introduced into the claims are a reaction to issues raised by the board for the first time in a communication sent after notification of a summons to oral proceedings and/or in the oral proceedings. New issues raised by the board at the oral proceedings are regarded as an exceptional circumstance that may justify the admittance of amended claims at such a late stage of the proceedings (Article 13(2) RPBA 2020). The amendments to the claims prima facie overcome the objections made by the board and do not give rise to new objections. The board, exercising its discretion, admitted the main request into the proceedings.
Contrary to the examining division, the board holds that it can be derived from the disclosure in the application as a whole that the particulate delivery vehicles of the invention are suitable for use in pharmaceutical preparations, but not necessarily restricted to such a use.
It is concluded that the subject-matter of the amended claim 1 does not extend beyond the content of the application as filed. The board concludes that the amendments do not contravene Article 123(2) EPC.
The present application was refused solely on the grounds of added matter. Thus, the examining division did not take an appealable decision on the compliance of the application with the requirements of Articles 83, 54 and 56 EPC.
Having found that the sole ground for refusal of the application is not justified in view of the amendments introduced into the set of claims filed as main request in appeal proceedings, the board may proceed further with the examination of the application, in particular with regard to Articles 83, 54 and 56 EPC, or remit the case to the examining division for further prosecution (Article 111(1) EPC).
Since the present appeal was pending on 1 January 2020, Article 11 RPBA 2020 is applicable. This article provides that the board shall not remit a case to the department whose decision was appealed for further prosecution, unless special reasons present themselves for doing so.
It has been established in numerous decisions of the Boards of Appeal that the primary function of the appeal proceedings is to give a judicial decision upon the correctness of a separate earlier decision taken by a department of the European Patent Office.
Conducting a complete examination of the application for compliance with the requirements of Articles 83, 54 and 56 EPC, for which in the present case no decision of the examining division exists yet, would run contrary to the primary object of the appeal proceedings which is to review the decision under appeal in a judicial manner. The board holds that this circumstance presents itself as a special reason for remittal.
The case is remitted to the examining division for further prosecution on the basis of claims 1 to 14 of the main request.