Key points
- In this opposition appeal, filed in 2019, three auxiliary requests filed with the Statement of grounds are not admitted under Art. 12(4) RPBA 2007.
- The Board: " Furthermore, it is apparent from the minutes of the oral proceedings on 17 April 2019 (page 2, penultimate sentence) that, after the rejection of the main request, the appellant-patent proprietor had time during the lunch break to reflect on how to proceed. At that time, the patent proprietor did not make any attempt to overcome the sufficiency objection by filing a new claim request. It instead stated that it wanted to proceed with the then pending auxiliary request 1. "
- " At the oral proceedings before the board, the appellant-patent proprietor did not submit any argument on this point. Therefore, auxiliary requests 1 to 3 were not admitted into the appeal proceedings pursuant to Article 12(4) RPBA 2007."
- " A preliminary opinion [of the opposition division] in preparation for the oral proceedings is not binding and may change during the oral proceedings. A change of mind of the opposition division following discussion at the oral proceedings to take up arguments considered not convincing in its preliminary opinion is a possible development in the proceedings and cannot come as a surprise."
- The patent concerns a second medical use claim.: "Glucocorticoid (GC) for use in a method of prophylaxis of neurological adverse events caused by the administration of a CD3 binding domain [compound], wherein [detailed features]".
- "The parties disputed whether the teaching on blinatumomab in the examples of the application as filed could be generalised to any CD3 binding domain." (blinatumomab is an example of a compound/domain that binds CD3; hence, blinatumomab can cause neurological adverse events that are prevented by Glucocorticoid.
- The Board: "The term "CD3 binding domain" encompasses a vast range of substances, including, inter alia, small peptides, antibody constructs and engineered proteins. These substances may exert different biological functions, even with opposite effects. For instance, the CD3-specific antibody OKT3 may both activate or block T-cells in a time-dependent fashion (D31, page 2, second paragraph). As the mechanisms by which blinatumomab causes NAEs and dexamethasone prevents those NAEs were unknown at the filing date and the NAEs could not be univocally attributed to the fact that blinatumomab binds the CD3 receptor, there was no scientific rationale for the skilled person to conclude that dexamethasone could prevent the NAEs caused by any CD3 binding domain within any therapeutic context.
- Therefore, the subject-matter of claim 1 of the main request is not sufficiently disclosed."
- Auxiliary Request 4 is considered to be allowable.
EPO
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/2023/10/t-234719-should-have-used-lunch-break.html
