Introduction
In decision T 1820/22, the EPO Technical Board of Appeal dealt with critical issues of added subject-matter under Article 123(2) EPC and the non-admission of late-filed auxiliary requests under the Rules of Procedure of the Boards of Appeal (RPBA). This decision, dated 28 February 2024, confirms the revocation of European Patent No. 3043639 held by Zoetis Services LLC. The case serves as a crucial reminder of the stringent requirements for amendments and the importance of addressing objections at the earliest stages of proceedings.
Summary of the Invention
The patent in question pertains to an apparatus for selectively injecting eggs, commonly used in poultry farming for vaccination or other treatments. The claimed invention includes an egg processing head and multiple injection devices capable of alignment with respective avian eggs. The injection devices are designed to pierce the eggs, allowing for the selective administration of treatment substances. A significant feature of the invention is the ability of these devices to align with eggs during processing, a point that became central to the legal discussions in this case.
Summary of the Board of Appeal Decision
Arguments by the Opponent (Egg-Chick Automated Technologies):The opponent argued that the added feature "each injection device is capable of alignment with a respective avian egg," introduced during the examination, constituted added subject-matter. They contended that this feature extended the scope of the original disclosure, which only described a conveyor assembly that aligns the eggs with the injection devices, rather than the injection devices themselves having any active alignment capability.
Arguments by the Patentee (Zoetis Services LLC):The patentee maintained that the amendment did not introduce new subject-matter and that the injection devices' ability to align with the eggs was implicitly supported by the original disclosure. They further argued that the late filing of auxiliary requests during the appeal was justified because the possibility of amendment only became clear after the opposition division's decision.
Board’s Decision:The Board dismissed the appeal, agreeing with the opponent that the amendment introduced added subject-matter not supported by the original application. The Board noted that the original disclosure only described the eggs being aligned with the injection devices through a conveyor system, not the injection devices themselves aligning with the eggs. The Board also refused to admit the auxiliary requests, citing their late submission and the patentee’s failure to address the added subject-matter issue during the opposition proceedings, despite being aware of it from the outset. The Board emphasized that amendments should have been filed earlier in the proceedings and that the introduction of numerous and complex auxiliary requests during the appeal was not justified.
Lessons Learned
Timely Addressing of Objections:The decision highlights the critical importance of addressing any objections, particularly those concerning added subject-matter, as early as possible in the proceedings. Waiting until the appeal stage to introduce amendments can be risky and often leads to non-admission, as the Board expects such issues to be resolved during the opposition phase.
Stringency of Article 123(2) EPC:The case reinforces the EPO's strict interpretation of Article 123(2) EPC. Any amendment made to a patent must be directly and unambiguously supported by the original application. In this case, the Board found that the addition of an alignment feature for the injection devices was not supported by the original disclosure, leading to the rejection of the main request.
Limitations on Late-Filed Requests:The Board's decision underscores the limited circumstances under which late-filed requests can be admitted. Amendments that could have been made during opposition are unlikely to be accepted during appeal unless there are exceptional justifications. Patent proprietors should be prepared to make all necessary amendments early in the process to avoid their requests being dismissed.
Complexity of Requests:The filing of numerous and varied auxiliary requests late in the proceedings can be seen as disproportionate to the issues at hand, leading to their non-admission. This case demonstrates that simplicity and clarity in addressing specific objections are preferred, rather than introducing a wide array of complex amendments late in the process.
Contact
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LegalDisclaimer
The information provided in this blog post is for generalinformational purposes only and does not constitute legal advice. The summary and analysis of the EPO case are based on publicly available information and are intended to offer insights into the decision and its implications. This content should not be used as a substitute for rofessional legal advice tailored to your specific circumstances. For advice related to any specific legal matters, you should consult a qualified attorney.