kst2640/corpus10 huggingface dataset:
5. As the decision under Appeal had been taken contrary to Article 113(1) and Rule 68(2), it is clearly equitable to order reimbursement of the appeal fee, pursuant to Rule 67 EPC.
6. The respondents auxiliary request for oral proceedings before the Board of appeal was only made in the event that the Board did not share his view as to the patentability of the invention. Since the case is remitted to the first instance for further prosecution without decision as to its merits there is no basis for such request.
2. The case is remitted to the first instance for further prosecution.
3. Reimbursement of the appeal fee is ordered.
I. European patent No. 0 386 492 was granted on 18 August 1993 on the basis of five claims in response to European patent application No. 90 102 682.3
II. A notice of opposition was received on 18 May 1994 and revocation of the patent in its entirety on the grounds of Article 100(a) EPC (lack of novelty and inventive step) and of Article 100(c) EPC (added subject-matter) was requested.
III. In a communication dated 2 June 1995, the opposition division considering five requests on file informed the parties of its preliminary opinion that the subject-matter of claim 1 according to the main request (claim 1 as granted) was not novel, being anticipated by YU-A-1595/84 (D1) in the light of its German language translation received on 25 April 1994.
With regard to claim 1 of the first auxiliary request, the opposition division raised questions as to the clarity of the claim, but indicated that there appeared to be no prior art teaching which, starting from D1, would have led the skilled person to make changes to the known system so as to arrive at the subject-matter proposed in claim 1, so that claim 1 according to the first auxiliary request appeared to meet the requirements of Articles 52(1), 54 and 56 of the EPC.
The patentee was invited to file a new patent specification with amended claims, correctly delimited against the prior art, and to comment on the lack of clarity issue raised in the communication.
IV. In a letter dated 26 June 1995 the opponent requested an opportunity to comment on the amendments to be filed prior to a decision being reached by the opposition division. If this were not possible, oral proceedings were requested.
V. Amendments were filed by the patentee on 4 December 1995 and communicated to the opponent on 15 December 1995 with a covering letter including the final statement Please take note.
VI. On 21 February 1996 the opposition division took its decision using EPO Form 2339.3. This form bears the signatures of the three members of the opposition division and contains the following text:
Interlocutory decision (Articles 102(3) and 106(3) EPC) on the amended form in which the European patent can be maintained, with the documents listed in Form 2339.4 (using Form 2327-IDOP).
VII. Form 2327 is date-stamped 6 March 1996 and states that account being taken of the amendments made by the patent proprietor during the opposition proceedings, the patent and the invention to which it relates are found to meet the requirements of the convention, indicates that the reasons for the decision are attached on eight pages of Form 2916 together with Form 2339 relating to the documents on which it is based and draws attention to the possibility of appeal. Form 2327, with Form 2916 attached, was dispatched to the parties by registered letter with advice of delivery. The registered letters were dispatched by the EPO on 6 March 1996.
VIII. In a letter dated 26 February 1996 and received by the EPO on 28 February 1996 the opponent had submitted his comments on the new set of claims filed 4 December 1995 asserting that the amended claim 1 conflicted with Articles 84, 123(2) and 56 EPC in that its subject-matter was not supported by the description, disclosed added subject-matter and lacked inventive step with regard to the disclosure of document D1. This letter was not referred to by the opposition division in its decision.
IX. On 8 May 1996 the opponent (now the appellant) lodged an appeal against the decision of 6 March 1996, primarily arguing in his statement of grounds of appeal received 8 July 1996 that the opposition division, in the light of the appellants request of 26 June 1995 to be given the opportunity to comment in writing or subsidiarily during oral proceedings on the amendments to be filed, should not have decided to maintain the patent on the basis of the amended claims filed on 4. December 1995 without taking into account the appellants submissions dated 26 June 1995 and 26. February 1996. Failure to take into account these submissions constituted a breach of Article 113(1) and 116(1) EPC which justified reimbursement of the appeal fee.
The appellant formulated his requests in the statement of grounds of appeal received 8 July 1996 as follows:
- the decision under appeal to be set aside and the case to be remitted to the Opposition Division for further proceedings,
- the appeal fee to be refunded,
- subsidiarily, oral proceedings to be appointed.
X. In the submission received 11 November 1996 the respondent defended the decision of the first instance. Regarding the requirements of Article 113(1) EPC he pointed out that the claims filed on 4 December 1995 corresponded to the former first auxiliary request on which the appellant had already filed his comments in his letter dated 2 March 1995.
The respondent requested to maintain the patent in the version on which the interlocutory decision of the opposition division of 6 March 1996 had been based, subsidiarily to maintain the patent on the basis of one of four auxiliary requests specified at page 2 of the letter dated 8 November 1996. Alternatively oral proceedings were requested.
2. It is established jurisprudence of the Boards of Appeal (see J 07/82, OJ 1982, 391 and T 0094/84, OJ EPO 1986, 337) that the right to be heard in accordance with Article 113(1) also guarantees the right to have the relevant grounds fully taken into account in the written decision. In the case of a decision maintaining the patent in amended form, this clearly includes not only the ground (s) for opposition themselves, but also the facts, evidence and arguments presented in support of these grounds.
3. In the decision under appeal the opposition division came to the conclusion that the patent as amended in accordance with the letter of 4 December 1995 met the requirements of the EPC.
This decision had completely ignored the arguments which were brought forward by the opponent in his letter of 26 February 1996.
4. However, decision G 12/91 of the Enlarged Board of Appeal dated 17 December 1993, published in OJ EPO 5/1994, pages 285 to 295, lays down that the point in time up to which the parties can expect account to be taken of any further submission they might make lies three days, (that is three working days), before the date of dispatch stamped on the decision. In the present case, the decision under appeal bears 6 March 1996 as the date of dispatch, which, applying the period referred to in G 12/91, means that any submission of the parties received before 1 March 1996 should have been considered by the opposition division.
5. Hence, in the Boards judgment the failure to consider these arguments constitutes a violation of the right to be heard and thus a substantial procedural violation as well as a fundamental deficiency in the first instance proceedings.
6. Article 10 RPBA (Rules of Procedure of the Boards of Appeal) provides that a Board shall remit the case to the first instance, if a fundamental deficiency is apparent in the first instance proceedings, unless special reasons present themselves for doing otherwise.
Since remittal of the case to the opposition division has been requested by the appellant and since the Board sees no special reason to do otherwise, the case is to be remitted to the opposition division in application of Article 10 RPBA to allow consideration of the arguments raised in the letter of 26 February 1996.
7. Moreover, since the appeal is allowed and the decision under appeal suffered from a substantial procedural violation, as set out above, it is in the Boards judgement equitable that the appeal fee should be reimbursed, pursuant to Rule 67 EPC.
8. Since the case is remitted to the first instance for further prosecution without decision as to its merits, it is, in the Boards view, neither necessary nor appropriate to appoint any oral proceedings in spite of the subsidiary requests of both parties (see T 0047/94 of 16 January 1995, not to be published).
2. The case is remitted to the Opposition Division for further prosecution.
3. The appeal fee is to be reimbursed.
I. The appeal is against an interlocutory decision of the Opposition Division maintaining European patent No. 0 402 887 (European patent application No. 90 111 169.0) in amended form.
II. The decision was based on Claim 1 filed on 17 April 1997 and Claims 2 to 6 of the patent as granted, said Claim 1 reading as follows:
A method for the preparation of N-phosphonomethyl glycine by the phosphonomethylation of glycine comprising the reaction of glycine with formaldehyde and trialkylphosphite, characterised in that it comprises the steps of:
- reacting glycine in methanol with an aqueous-alcoholic solution of formaldehyde in the presence of a base selected from the group consisting of alkali and alkaline-earth metal hydroxides, wherein said aqueous alcoholic solution of formaldehyde consists of 55% wt. formaldehyde, 35% wt. methanol and 10% wt. water and is added in a glycine/formaldehyde molar ratio between 1:1 and 1:2,
- reacting the thus obtained solution with trialkylphosphite, and
- effecting hydrolysis in an aqueous medium and recovering the N-phosphonomethyl glycine by crystallisation.
III. The opposition and the appeal were supported by numerous documents including:
(1) PL-A-136276 and translation into English,
(2) US-A-4 237 065,
(3) Merck Index, Tenth Edition, 1983, page 604, item 4120: Formaldehyde solution. Formalin; formol,
(7) Kirk-Othmer, Encyclopedia of Chemical Technology, third Edition (1980), vol. 11, pages 231 to 245,
(8) US-A-3 629 997,
(12) CN-A-85-1-02988 and translation into English,
(24) US-A-4 486 359,
(25) US-A-4 065 491,
(46) PL-A-141 981 and translation into English,
(47) US-A-4 439 373,
(48) US-A-4 548 759,
(49) US-A-4 491 548,
(52) Bayer Inorganic Chemicals Business Group, DIN Safety Data Sheet 006495/08 (20/4/89)-Trimethylphosphite,
(53) Albright and Wilson Inc. Product Information Bulletin (1984), Dialkyl and Trialkylphosphites, and
(54) Bull. Acad. Science USSR, Chemical Sciences (English Translation) 2427-2428, (1967).
IV. During the opposition proceedings, in a communication according to Rule 71a(1) EPC accompanying the summons to attend oral proceedings, the Opposition Division had given its preliminary opinion that it was not convinced that a methanol medium possessed unexpected advantages over an aqueous medium, and that therefore the claims might not be regarded as meeting the requirements of inventive step in view of document (1). The Respondent reacted to this by filing a report of comparative experiments on the last day of the period set for filing comments pursuant to Rule 71a(1) EPC. The Opposition Division allowed this experimental report into the proceedings, but did not react to the Appellants (Opponents) request for an assurance that it be given an opportunity to file an experimental report in response, or that the oral proceedings be postponed. At the oral proceedings before the Opposition Division the Appellant submitted an experimental report, but the Opposition Division, having considered it, refused to take this into the proceedings.
Furthermore, the Opposition Division held in its decision that the amendments made to Claim 1 of the patent in suit as granted satisfied the requirements of Articles 83, 84 and 123 EPC and that its subject-matter was novel and involved an inventive step.
Concerning inventive step, the Opposition Division considered that the closest state of the art was document (1) and that in the light of this prior art the technical problem underlying the patent in suit was the provision of an alternative process for the preparation of N-phosphonomethyl glycine. Moreover, it held that the solution of this problem as claimed in Claim 1, and in particular by using the specific 55% formaldehyde solution and methanol as solvent, was not obvious in view of the cited prior art. In this context, it also considered that the skilled person would not combine the teaching of document (1) with that of document (2) and/or document (12), since the reaction media and the reaction mechanisms were not comparable.
The Opposition Division also held in its decision that the Appellants experimental report submitted during the oral proceedings was disregarded because it was late filed and because it was not relevant enough to change the outcome of the opposition procedure.
V. The Appellant firstly argued that the Claim 1, which was considered to be allowable by the Opposition Division, did not meet the requirements of Articles 84 and 123 EPC, because:
- by introducing the expression reacting glycine in methanol it was not clear whether a solution or suspension of glycine in methanol was applied or that the entire reaction was carried out in methanol implying the absence of water, so that the claim did not meet the requirement of clarity within the meaning of Article 84 EPC,
- said introduced expression was not supported by the application as filed contrary to the requirement of Article 123(2) EPC,
- the added expression weight % in relation to the formaldehyde solution could not be considered as a correction in accordance with Rule 88 EPC and therefore also contravened Article 123(2) EPC, and
- by deleting the essential feature in an aqueous-alcoholic solution in the preamble of the Claim 1 as granted, the protection conferred by the patent in suit was extended contrary to the provision of Article 123(3) EPC.
Concerning inventive step, and having regard to the fact that according to the amended Claim 1 the reaction was carried out in methanol as solvent instead of an aqueous-alcoholic solution, the Appellant introduced into the appeal proceedings documents (46), (47), (48) and (49). These documents, as well as documents (1) and (46) in combination and documents (25) and (24) in combination showed that there was a clear trend in the prior art to use methanol as reaction medium. Furthermore, he introduced documents (52), (53) and (54) into the appeal proceedings in order to show that there was also a clear trend to use trialkyl phosphites instead of dialkyl phosphites, since the last mentioned phosphites showed more tendency to hydrolysis under alkaline conditions. He concluded that, starting from document (24) as the closest prior art and in view of these cited documents, it would have been obvious to the skilled person to use trialkyl phosphites instead of dialkyl phosphites and the claimed formaldehyde solution instead of paraformaldehyde.
Alternatively, the Appellant argued lack of inventive step starting from document (1) as the closest state of the art, and by submitting that it would have been obvious to the skilled person in the light of documents (46), (2) and (12) to use a methanol-rich reaction medium and therefore also the claimed formaldehyde solution in order to suppress the occurrence of hydrolysis of trialkyl phosphites known from documents (52), (53) and (54). Concerning document (1) he observed by relying on, amongst others, document (3) that the Opposition Division had erred in interpreting the term formalin used in the examples of document (1) as an aqueous solution of formaldehyde which did not contain methanol. Moreover, he observed that the phosphonomethylation itself generated methanol as a by-product. Conversely, the process of the patent in suit used a medium substantially based on methanol with some water present, because water was generated early on in the course of the reaction, i.e. by the reaction of the glycine with the caustic used. Therefore, the Opposition Division should have taken into account that the process of document (1) and the process of the patent in suit both used an aqueous-alcoholic reaction medium, albeit one (the claimed process) contained appreciably more alcohol than water. Thus, it would have been obvious in the light of documents (52), (53) and (54) to substitute the 36% formaldehyde solution (formalin) with a 55% formaldehyde solution known from e.g. document (8).
The Appellant also argued that there were substantial procedural violations entitling the Appellant to reimbursement of the appeal fee. Firstly, the Opposition Division should not have allowed the Respondents experimental evidence into the proceedings just one month before the oral proceedings. Secondly, that having allowed this in, the Opposition Division were then obliged either to allow in the Appellants experimental report in response filed only at the oral proceedings, or to postpone the oral proceedings as suggested by the Appellant. Finally, the filing of the Respondents experimental report just one month before the oral proceedings before the Opposition Division was a tactical abuse of the procedure by the Respondent, entitling the Appellant to an award of costs.
VI. Oral proceedings before the Board were held on 27. January 2000. The Appellant, who had been duly summoned, had previously informed the Board that he would not attend the oral proceedings. The oral proceedings thus took place in the absence of the Appellant (Rule 71(2) EPC).
VII. At the oral proceedings, the Respondent filed a new Claim 1 differing from Claim 1 upon which the decision of the Opposition Division was based only in that the expression in methanol was transferred and inserted after metal hydroxides so that the reaction step in the claim read
...reacting glycine with an aqueous-alcoholic solution of formaldehyde in the presence of a base selected from the group consisting of alkali and alkaline-earth metal hydroxides in methanol....
He also filed appropriately adapted pages of the description.
Furthermore, the Respondent denied that the subject-matter of the present claims had the formal deficiencies indicated by the Appellant in view of Articles 84 and 123 EPC by arguing that it was clearly indicated in present Claim 1 that the glycine was reacted in methanol with an aqueous-alcoholic solution of formaldehyde and that it was common general knowledge as supported by document (7) and document
(27) American Chemical Society Monograph Series, No. 159, third Edition (1964), Formaldehyde, J. Frederic Walker, Chapter 3, State of Dissolved Formaldehyde, New York Reinhold Publishing Corporation, pages 52-57, 78-79, 83-85 and 90-95,
that the amounts of the components of the formaldehyde solution were expressed in weight percentages. He also pointed out that the phrase in an aqueous-alcoholic solution in the preamble of Claim 1 as granted was merely deleted as superfluous, so that the scope of the claim had been reduced rather than extended.
The Respondent defended inventive step by starting from each of documents (1), (46) or (24) in turn. In this context, he argued that document (1) disclosed, as an essential feature, the use of an aqueous reaction medium and nowhere suggested the use of methanol as solvent or the use of the formaldehyde solution according to the patent in suit. Furthermore, he emphasised that all the prior art literature which carried out the reaction in methanol aimed at achieving anhydrous conditions and that there was no equivalence between trialkyl phosphites and dialkyl phosphites, because they showed in the phosphonomethylation reaction a different reaction mechanism.
VIII. The Appellant (Opponent) requested in writing that the decision under appeal be set aside and that the patent in suit be revoked. He also requested an apportionment of costs in his favour and reimbursement of the appeal fee.
The Respondent (Patentee) requested that the decision under appeal be set aside and that the patent be maintained on the basis of:
Claims: Claim 1 as filed at the oral proceedings on 27 January 2000 before the Board,
Claims 2 to 6 as granted.
Description: pages 2 and 3A as filed on 27 January 2000 before the Board,
pages 2A and 3 as filed on 17 April 1997 before the Opposition division,
page 4 as granted.
IX. At the conclusion of the oral proceedings, the Boards decision was announced.
1. Admissibility
1.1. The appeal is admissible.
2. Request for reimbursement of the appeal fee
2.1. According to Rule 67 EPC the reimbursement of the appeal fee shall be ordered where the Board of Appeal deems an appeal to be allowable and if such reimbursement is equitable by reason of a substantial procedural violation.
2.2. In the present case, the Opposition Division in its preliminary opinion in the communication according to Rule 71a(1) EPC accompanying the summons to attend oral proceedings, indicated that it was not convinced that the invention as claimed possessed unexpected advantages over the prior art, and that therefore the claims might not be regarded as meeting the requirements of inventive step in view of document (1). The Respondent (Patentee) could reasonably be expected to react to this, and actually did so, in filing a report of comparative experiments on the last day of the period set for filing comments pursuant to Rule 71a(1) EPC. The Opposition Division allowed this experimental report into the proceedings. The board cannot here see any procedural violation by the Opposition Division, nor any abuse of procedure by the Respondent. Rather it would seem strange to deny the Respondent the right to react to the comment by the Opposition Division.
2.3. However, the Opposition Division did not allow the Appellants experimental report, in response to the Respondents experimental report, into the proceedings. In this context, it stated in the decision under appeal that the report was disregarded because it was late filed and because it was not relevant enough to change the outcome of the opposition procedure.
2.4. However, the Board considers that by admitting into the proceedings the Respondents experimental report, the subject of the proceedings had changed in the sense of Rule 71a(1) EPC. Thus both on general principles of even-handedness between the parties, and on the specific wording of Rule 71a(1) EPC (see its first paragraph, last sentence), the Appellants experimental report should have been admitted into the proceedings as a response to the Respondents experimental report. That the Appellants report would not affect the outcome of the proceedings was in these circumstances not a consideration that should have been taken into account when deciding on its admission into the proceedings. After hearing the Respondents comments on its report, the Opposition Division might perhaps have wished to cut short the Appellants comments on its report, by stating that these were unnecessary because the Opposition Division was already of the opinion which the Appellant was arguing for on this point. However the Opposition Division did not do this, but rather refused to let the Appellants report into the proceedings at all, on the grounds that it was belated and irrelevant, leaving the Appellant aggrieved.
2.5. A party is entitled to know that its response is part of the documents admitted into the proceedings, even if it turns out not to be decisive for the outcome before that instance. To let in the experimental report of one party, but not the response of the other party gives the appearance of discriminatory treatment.
2.6. This view of the Board is confirmed by the reasons which persuaded the Administrative Council to introduce Rule 71a EPC, as set out in the Explanatory Memorandum CA/012/94- Rev. 1 dated 17 October 1994 from the President of the European Patent Office (published, with slight editorial changes, in OJ EPO 1995, pages 418 and 419, but the original text being quoted here) which, in particular, states that (underlining by the Board):