Introduction
The EPO Technical Board of Appeal decision T 1117/23, issued on 8 August 2024, underscores the critical importance of adhering to procedural deadlines, particularly the requirement to file a statement of grounds of appeal. The Board rejected the appeal filed by Aragon Pharmaceuticals, Inc. against the revocation of their European Patent No. 3305285 due to the absence of a timely filed statement of grounds. This decision serves as a cautionary tale for patent proprietors on the strict procedural requirements enforced by the EPO.
Summary of the Invention
The patent in question, held by Aragon Pharmaceuticals, Inc., relates to the use of anti-androgens for the treatment of non-metastatic castrate-resistant prostate cancer. Anti-androgens are compounds that inhibit the effects of androgens (male hormones), which can contribute to the progression of prostate cancer. The invention specifically focuses on therapeutic methods to improve patient outcomes in cases where the cancer has not yet metastasized but is resistant to traditional castration therapies.
Summary of the Board of Appeal Decision
Arguments by the Patentee (Aragon Pharmaceuticals, Inc.):Aragon Pharmaceuticals filed a notice of appeal against the decision of the Opposition Division to revoke their patent. However, they failed to submit a statement of grounds of appeal within the required four-month period as stipulated by Article 108, third sentence, EPC. Despite receiving a communication from the Board indicating the absence of this crucial document, Aragon Pharmaceuticals did not respond or request re-establishment of rights within the prescribed period.
Board’s Decision:The Board of Appeal found that while the notice of appeal was filed in due time and the appeal fee was paid, the absence of a statement of grounds of appeal rendered the appeal inadmissible. According to Article 108 EPC and Rule 99(2) EPC, the statement of grounds is a mandatory requirement for the appeal to be considered. Since Aragon Pharmaceuticals neither provided this statement nor responded to the Board’s communication, the appeal was rejected as inadmissible under Rule 101(1) EPC.
Lessons Learned
Strict Compliance with Procedural Deadlines:The decision highlights the importance of adhering to all procedural deadlines in the appeals process. Filing a notice of appeal and paying the appeal fee are necessary steps, but without the submission of the statement of grounds within the four-month deadline, an appeal will not be considered by the Board. Patent proprietors must ensure that all procedural requirements are meticulously followed to avoid the risk of having their appeals dismissed.
The Role of the Statement of Grounds of Appeal:The statement of grounds of appeal is essential because it outlines the reasons why the appellant believes the decision under appeal is incorrect. This document forms the basis of the appeal and allows the Board to understand the appellant’s arguments. Without it, the appeal cannot proceed, emphasizing the need for thorough preparation and timely submission of all relevant documents.
Proactive Communication with the EPO:The case also illustrates the importance of responding to communications from the EPO. In this instance, the Board informed the appellant of the missing document and the potential consequences. However, the lack of a response from the appellant resulted in the appeal being dismissed. Proactively engaging with the EPO when issues arise could provide opportunities to address procedural deficiencies, such as by requesting re-establishment of rights if applicable.
Consequences of Inadmissible Appeals:The rejection of an appeal as inadmissible means that the original decision remains in force. In this case, the revocation of the patent was upheld. This underlines the high stakes involved in patent proceedings and the critical importance of following all procedural rules to protect valuable intellectual property rights.
Link to the case : HERE
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Legal Disclaimer
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 professional legal advice tailored to your specific circumstances. For advice related to any specific legal matters, you should consult a qualified attorney.