18 June 2024

Mathys & Squire files Petition for Review for Ipsen Bioinnovation

Mathys & Squire attorneys: David Hobson, Martin MacLean and Nicholas Fox have filed a Petition for Review on behalf of Ipsen Bioinnovation asking the European Patent Office’s (EPO) Enlarged Board of Appeal to set aside a decision which resulted in the revocation of Ipsen Bioinnovation’s patent EP 2677029.

A Petition for Review is an exceptional remedy which enables a party to overturn a decision of an EPO Board of Appeal. The success rate for Petitions for Review is notoriously low, with fewer than 5% being successful. This is because Petitions for Review can only be based on very specific grounds and there is an obligation on parties to bring issues to a Board’s attention at a hearing. Failing to do so renders a Petition for Review inadmissible unless the circumstances are such that an objection could not have been raised during the appeal proceedings.

Unusually, valid grounds for a Petition for Review appear to have been made out in the present case.

Background to the case

EP 2677029 was opposed as allegedly being invalid on the grounds of added matter, lack of sufficiency and lack of inventive step. At first instance, the added matter objection was rejected. However, the allegation of lack of sufficiency was upheld. No ruling was made on inventive step.

Ipsen Bioinnovation appealed.

When responding to the Grounds of Appeal, in addition to asking the Board of Appeal to uphold the Opposition Division’s finding of lack of sufficiency, the respondent also asked the Board to overturn the Opposition Division’s decision that the claims of Ipsen Bioinnovation’s Main Request did not add matter. This argument gained traction with the Board of Appeal, and in a Preliminary Opinion, issued by the Board a few weeks before a hearing was scheduled, the Board indicated that they were of a preliminary view that three of the dependent claims in the Main Request contained added matter.

Mathys & Squire responded by filing arguments to the contrary and in addition, submitted two additional auxiliary requests into the proceedings which deleted these dependent claims, noting that such claims could not have been filed with the original appeal because the Opposition Division had previously found in Ipsen Bioinnovation’s favour.  Mathys & Squire further noted that the deletion dealt fully with the added matter objections, did not raise any new issues, and did not in any way shift the focus of the appeal which, from the beginning of the case, had been the issue of sufficiency.

Fundamental violation of the right to be heard

At Oral Proceedings, after initially rejecting an added matter attack against claims 1 and 3 of the Main Request, the Board ruled that dependent claims 2 and 4 of the Request added matter. The Board then proceeded to refuse to admit the requests deleting these claims into the proceedings and revoked the patent. No explanation for the refusal to admit the auxiliary requests which deleted the dependent claims alleged to add matter was given at the oral hearing itself.

When the Board’s written decision was issued, it became apparent that the Board had departed from previous EPO case law which would have admitted the requests deleting the relevant dependent claims into the proceedings.

Starting with the decision in T1480/16, many Boards[1] have ruled that deleting dependent claims (particularly when such a deletion does not result in a shift of the focus of a case) is merely a restriction of the scope of an appeal and as such does not constitute an amendment of an appellant’s case. Under such an interpretation of the law, such a request can be made at any time during appeal proceedings and a Board does not have a discretion to refuse the request merely because it is submitted after parties have been summoned to Oral Proceedings.

A second line of case law has taken a different view, holding that the deletion of dependent claims does constitute an amendment of a party’s case. This means that a party has to establish “exceptional circumstances” that justify the admission of a request. However, invariably this has been held to satisfy the “exceptional circumstances” test for admission whenever a request has related solely to the deletion of dependent claims which:

  • do not change the factual or legal framework of the proceedings; and
  • which addresses all issues which have been discussed and decided upon at Oral Proceedings. [2]

In the present written decision, it became apparent that the Board had declined to follow either of these approaches and instead had decided to refuse to admit the amendments on the ground that they did not address the Board’s concerns relating to sufficiency of disclosure; a ground that had never been discussed at the Oral Proceedings.

Basing a decision on a ground on which a party has not had the opportunity to present comments is a clear breach of a party’s right to be heard under Article 113 EPC and constitutes grounds for a Petition for Review. Further, as there was no prior indication that the Board would depart from the previous case law and that the Board required arguments on sufficiency to be presented, it was not possible to bring this breach to the attention of the Board at the hearing itself.

David Hobson, commented: “Our client Ipsen clearly suffered an injustice here. I recall my surprise at the hearing that our claim requests were not admitted given that: (i) they unquestionably addressed the added matter issue; and (ii) our position was supported by well-established EPO case law. It was only upon receipt of the decision that the underlying reasoning of the Board of Appeal became clear. I could not have guessed at the time that Ipsen’s right to be heard had been violated and that a consideration of sufficiency was central to the Board of Appeal’s refusal to admit the claim requests. We are hopeful that the Petition for Review will put right this wrong.”

Martin MacLean commented: “The post-grant proceedings in relation to this patent have been as unconventional as I have experienced in 25 years of practicing as a European Patent Attorney. The whole purpose of Oral Proceedings is to give patentees the opportunity to be heard prior to a Board of Appeal ruling on the validity of a patent. When issuing their decision to revoke this patent, the Board must have been aware that questions of sufficiency had not been discussed. The Board’s decision to revoke this patent is therefore clearly unsafe and should be overturned.”

The case is proceeding as case number R14/24.

[1]  For example in: T914/18, T995/18, T1857/19, T884/18, T565/16, T981/17, T1792/19 and T2201/19.

[2] See for example T853/17, T306/18, T682/16, T1224/15, T853/17, T306/18, T884/18, T494/18 and T2920/18.