In the appeal case at hand both the proprietor (appellant 1, AP) and the opponent (appellant 2, AO) appealed the Opposition Division’s (OD) decision to maintain EP2305711 B1 in amended form on the basis of Auxiliary Request 2 [AR2]. The OD found that the subject matter of claims 12 and 13 as granted contravened the requirements of Art. 123(2) EPC and Art 76(1) EPC. The OD also concluded that that claim 1 of AR2 (identical to claim 1 as granted) was sufficiently disclosed because there was ‘’no evidence on file that an anti-NGF antibody would not improve physical function in the absence of pain’’
The AP set out with the Grounds of Appeal [GoA] that claims 8 and 9 of the Main Request [MR] did not comprise added matter. AP filed a MR and AR1-AR24.
AO set out with the GoA that claim 1 of the MR did not comply with the requirements of Art. 83 EPC. AO further requested accelerated proceedings in view of national litigation, which was granted by the Board.
In response to AP’s GoA, AO responded that claims 8 and 9 of the MR (corresponding to claims 12 and 13 as granted) comprised added subject matter, equally present in AR2-4 and 7-19. Additionally AO objected under Art 83 EPC against AR1 – 10, 12 – 16 and 20 – 24.
Subsequently a notice of intervention was filed. The intervener ‘’adopt[ed] the facts, evidence and arguments set out by the existing opponent’’ and filed AO’s GoA together with the responses filed in appeal by AO and 2 new documents.
In reaction to the Board’s preliminary opinion AP submitted new AR 2 -19 and submitted that the intervention was inadmissible. AR 11, 17, 18 and 19, that were thus filed after the receipt of the summons, were identical to AR 11, 17, 18 and 19 filed with the GoA with claims 7 and 8 deleted from AR 11, 18 and 19 and claims 6 and 7 from AR 17, i.e. the claims the OD considered to violate Art. 123(2) EPC and Art 76(1) EPC. AP further set out the patent complied with the requirements of sufficiency and that the deletion of the claims from AR 11, 17, 8 and 19 was in direct response to the Board’s preliminary opinion wherein the Board would have provided new arguments against added subject matter which provided for ‘’exceptional circumstances’’. Further the deletion would provide ‘’improve(d) procedural economy without changing the factual situation’’.
AP found the intervention inadmissible for 2 reasons: 1) the intervenor only referred to the submissions filed by AO in the appeal procedure, not to the 1st instance submissions and therefore the case would not be comparable to T 1659/07 and 2) part of O’s arguments would be inadmissible. The intervener responded that the cross-reference to AO’s submissions related to documents on file, thereby validly substantiating the intervention in line with T1659/09. Reference to 1st instance was not necessary. The request by AP not to admit documents had no bearing on whether the intervention was substantiated as required by Rule 89 EPC. Also, in line with G1/94, the intervener was free to raise any objection.
The Board set out that under Rule 89(2) and Rule 76(2) EPC that the intervention must be a written reasoned statement indicating the extent and facts and evidence of the grounds of opposition. In T1659/07 a reference to the grounds and arguments of an opponent was considered sufficient. The Board found that in the case at hand the reference to AO’s submissions was equally sufficient and the intervention was considered admissible.
The Board then came to the view claim 1 of the MR did not comply with the requirements of Art. 83 EPC. As a result subsequently the admissibility of new AR 11, 17, 18 and 19 was assessed under Art 13(2) RPBA20 as they represented an amendment to a party’s case.
AP reiterated that the amendment was a direct response to the Board’s preliminary opinion on added subject-matter and that the amendment improved procedural economy without changing the factual situation. AP argued ‘’This latter circumstance was similar to those underlying decisions T 1480/16 and T 995/18 where the entrusted boards had admitted newly filed requests resulting from the deletion of claims.’’
The Board disagreed and dismissed both lines of reasoning. The Board set out that in the opposition proceedings, an objection under Art 100(c) EPC had been raised against claims 12 and 13 as granted and the OD found that claims 12 and 13 as granted related to subject-matter which extended beyond the disclosure of the application and the earlier application as filed. In fact, the AP’s appeal was centered around added subject matter only, thus AP had to expect that the Board could uphold the OD’s decision. Consequently, no exceptional circumstances under Art 13(2) RPBA2020 were present.
The Board also did not agree that the deletion of two claims from the claim requests improved procedural economy without changing the factual situation; the deletion of the claims resulted in sets of claims covering subject-matter which had not been decisive prior to the filing of the new ARs. The parties and the Board were confronted with a new line of defense which had not been part of the AP’s original appeal case.
The decision under appeal was set aside and the patent was revoked.