Key points
- With about two years delay, we are seeing an uptick in cases about Art. 12(4) RPBA 2020.
- "Article 12(4) RPBA 2020, second sentence establishes the appellant's obligation to identify any amendment to its case and provide reasons for submitting it in the appeal proceedings. "
- "The appellant failed to fulfil its obligation under Article 12(4) RPBA 2020, second paragraph. It neither identified the amendment to its case nor provided reasons for submitting it in the appeal proceedings. "
- The case amendment of the patentee was the new argument that " there was a technical prejudice in the prior art against the combination of the teaching of D1 and D2."
- In particular, " The skilled person would have derived from D1 that it was essential for good MS and fluorescence signals that the group linking the labelling agent to the glycan be an amino group. As the linking group resulting from the method of D2 was a urea, the skilled person would have expected a loss of the MS signal and possibly also of the fluorescence signal when the method was used on the compounds of D1. According to the appellant, this prejudice was based on the skilled person's common general knowledge"
- The patentee argues that the argument was based on paragraph [0037] of the patent and common general knowledge.
- Note, the Board does not apply the factors specified in Art. 12(4) for balancing the interests of the parties.
- The Board also applies Art. 12(6)(s.2) RPBA 2020: " Furthermore, no circumstances justify the filing of the new argument in the appeal proceedings. The argument could and should have been filed in the opposition proceedings since the facts on which it relies were known to the appellant from the outset of the opposition proceedings. This is confirmed by paragraph [0037] of the patent, which hints at a relationship between the electron density on amino and urea groups and their corresponding MS signals."
- " As this submission could not be justified as a legitimate reaction to late developments in the opposition proceedings and created a new situation on appeal, the board exercised its discretion not to admit the new argument under Article 12(4) and (6) RPBA 2020."
- As a comment, Art. 12(6)(s.2) does not clearly specify a discretion of the Board ("the Board shall not admit...").
The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.
source http://justpatentlaw.blogspot.com/2022/12/t-007320-obligation-to-identify-under.html
