Key points
- This is the 2nd decision of the Board in this case, this time concerning the request for correction of the minutes. A petition for review is pending and likely the requested correction could help the patentee/respondent in appeal/petitioner for review with the petition for review.
- “With letter of 10 June 2021 the Respondent/Patent Proprietor requested that the minutes of the oral proceedings held on 11 February 2021 be corrected because they did not correctly reflect a part of the oral proceedings. In particular, it was requested that the statement "The Chairman informed the parties of the preliminary opinion of the Board that the conclusion to be drawn with regard to the main request would apply mutatis mutandis to auxiliary requests 1 to 4. The parties agreed on the preliminary opinion of the Board." be replaced by "The Chairman asked the parties to confirm whether their arguments in relation to Auxiliary Requests 1 to 4 were the same as for the Main Request with respect to novelty over D9. The parties confirmed that their arguments for Auxiliary Requests 1 to 4 were the same."”
- The Board: “As indicated in the Board's communication dated 14 July 2021, on the basis of its own notes and recollection of the oral proceedings, the Board confirms that the minutes correctly reflect the part of the oral proceedings referred to in the Respondent's request for correction. While this reason alone could be sufficient to refuse the request, ... ”
- “ in view of the fact that in the declaration of Mr. [X] [that] it is considered "non-sensical that the Respondent-Proprietor would agree that the conclusion to be drawn with regard to the Main Request would apply mutatis mutandis to Auxiliary Requests 1, 2 and 4" [] the Board carefully considered whether there were objective reasons for the Board to exclude that such an agreement would be given. However, as indicated in the Board's communication of 14 July 2021, the Board considers it not to be the case for the following reasons.” (detailed reasons then follow)
- The Board: “As an aside it is noted that there appears to be no compelling reasons why the minutes of the oral proceedings were contested so long after they had been received by the parties (about three and a half months). In particular, should the Respondent's representative have considered that these minutes did not reflect what had happened during the oral proceedings, a prompt request of correction at a point in time in which the recollection of all participants was still much fresher in mind would have seemed appropriate.
Reasons for the Decision
1. As indicated in the Board's communication dated 14 July 2021, on the basis of its own notes and recollection of the oral proceedings, the Board confirms that the minutes correctly reflect the part of the oral proceedings referred to in the Respondent's request for correction.
2. While this reason alone could be sufficient to refuse the request, in view of the fact that in the declaration of Mr. Walsh it is considered "non-sensical that the Respondent-Proprietor would agree that the conclusion to be drawn with regard to the Main Request would apply mutatis mutandis to Auxiliary Requests 1, 2 and 4" (point 25 of the declaration, first two lines after subpoint iv.), the Board carefully considered whether there were objective reasons for the Board to exclude that such an agreement would be given. However, as indicated in the Board's communication of 14 July 2021, the Board considers it not to be the case for the following reasons.
2.1 In the Board's view, it was made clear during the whole proceedings that, in view of decision G 2/88 (OJ EPO, 1990, 93), the crucial point for the decision regarding novelty of the main request over D9 was whether or not the feature "high Tg" specified in operative claim 1 was a feature related to a specific use of the compositions defined in said claim 1 (i.e. leading to a new application), whereby the use mentioned in the claim did not appear to be distinguishable from the ones disclosed in the examples of D9 but rather appeared to constitute a property of said composition itself. Indeed, this was identified in section 7.4.1 of the Board's communication dated 14 August 2020 (preliminary opinion of the case sent in preparation of the oral proceedings). In the following section of that communication, it was further indicated that an additional argument of the Respondent regarding the feature "high Tg" did not appear convincing (section 7.4.2). Further down in the communication, it was also pointed out that no additional arguments were put forward by the Respondent in respect of inter alia auxiliary request 1 (sections 9 and 9.2) so that the same issues as for the main request were also relevant for auxiliary request 1, this in spite of the fact that the amendments made were said to appear to address the issue of the definition of the feature "high Tg" (section 9.3).
source http://justpatentlaw.blogspot.com/2021/12/t-327219-ii-request-for-correction-of.html
