T 0301/11 03-02-2015

I. The appeal of the patent proprietor (appellant) lies against the decision of the opposition division announced at the oral proceedings on 19 October 2010 revoking European Patent 1 401 404. The patent was granted on the basis of 9 claims, claims 1 and 9 reading as follows:

"1. A method of encapsulating an active substance in a polymeric encapsulating material to make an encapsulated product in particulate form by

forming a mixture of a supercritical fluid, a polymeric encapsulating material and an active substance,

causing or allowing the encapsulating material to encapsulate the active substance to form an encapsulated product,

separating the encapsulated product from the supercritical fluid, and

if necessary, subjecting the encapsulated product to size reduction to obtain encapsulated product particles in which the active substance is encapsulated by the encapsulating material,

the method being characterized in that,

the forming of the mixture is of the supercritical fluid, the active substance and a polymeric encapsulating material in the form of an interpolymer complex comprising at least two different complementary polymers,

so that the encapsulated product comprises particles of the active substance encapsulated by the interpolymer complex,

wherein the supercritical fluid is carbon dioxide,

wherein the forming of the mixture comprises the step of dissolving the supercritical fluid in the interpolymer complex to liquefy or plasticize the interpolymer complex."

"9. A method as claimed in any of the preceding claims, characterized in that it comprises selecting the polymers, which form the interpolymer complex from complementary members of the group consisting of poly(vinylacetate)-crotonic acid copolymer, poly(vinyl pyrrolidone), poly(ethyleneglycol), poly(vinyl pyrrolidone)-poly(vinyl acetate) copolymer and poly(ethylene oxide)-poly(propylene oxide)-poly(ethylene oxide) tri-block copolymer."

II. A notice of opposition was filed in which revocation of the patent in its entirety was requested on the grounds of lack of novelty and of inventive step, of insufficiency of disclosure and of extension of the subject-matter beyond the content of the application as filed (Article 100(a), (b) and (c) EPC). As to extension of subject-matter the objection was that there was no explicit disclosure in the application as filed of the use of carbon dioxide as supercritical fluid (section 9 of the notice of opposition).

III. In a communication sent in preparation of oral proceedings dated 4 March 2010 the opposition division expressed the preliminary opinion that the application as filed disclosed the use of carbon dioxide as the preferred supercritical fluid (point 2 on page 4), so that there was no extension of subject-matter, and the final date for making written submissions and/or amendments according to Rule 116 EPC was indicated to be 19 August 2010.

IV. With letter dated 19 August 2010 the opponent submitted inter alia that claim 9 and paragraph [0010] of the patent as granted containing a list of polymers from which the complementary polymer might be selected extended beyond the application as filed (section 3 of that letter).

V. With letter dated 19 August 2010 the patent proprietor submitted a single set of claims as main request. Claim 1 of the main request corresponded to claim 1 as granted with the exception of a reformulation of the definition of the polymeric encapsulating material in the forming step as "comprising at least two different complementary polymers that interact together by hydrogen bonding to form an interpolymer complex", while claim 9 remained unamended.

VI. At the beginning of the oral proceedings before the opposition division on 19 October 2010 the patent proprietor declared that three auxiliary requests were ready to be filed (point 2 in the minutes). The opponent objected to claim 9 and paragraph [0010] of the contested patent under Article 123(2) EPC and to the amendment in claim 1 of the main request under Article 123(3) EPC, but stated that the objections no longer included lack of support for the feature concerning the use of carbon dioxide (point 3 in the minutes, first four paragraphs). Then the patent proprietor took position on the two objections of the opponent (point 3 in the minutes, last four paragraphs). After an interruption the chairman announced that "claims 1-9 as amended with the letter dated 19 August 2010 complied with the requirements of Article 123(3) EPC but did not comply with the requirements of Article 123(2) EPC" (see point 5 in the minutes). As the patent proprietor asked for time to file an auxiliary request, the proceedings were interrupted for half an hour (point 6 in the minutes). After the interruption the patent proprietor "announced his decision not to file any further request" (point 7 in the minutes). The chairman of the opposition division announced therefore the revocation of the patent on the ground of Article 100(c) EPC (point 8 in the minutes).

VII. The decision under appeal, which was accordingly based on the main request filed with letter of 19 August 2010, can be summarised as follows:

a) Even though the term "interpolymer complexes" was omitted in one instance in claim 1 of the main request, it still appeared twice, so that the omission had no influence on the scope of the claims and the requirements of Article 123(3) EPC were met.

b) As to added subject-matter (Articles 123(2) and 100(c) EPC), the specific copolymers listed in claim 9 had no basis in the application as filed. The polymers mentioned in the examples of the original application were used only in specific combinations and were from specific suppliers, so that they could not provide a basis for the generalisation in the claims. The term "copolymers" in the description could not be taken as a basis for the specific copolymers, as they were the result of a two-fold or three-fold selection from all the possible polymers. In addition the tri-block copolymer in claim 9 was only disclosed in the original application as a polymer surfactant. Further, the application as filed did not contain any disclosure that the specific copolymers of claim 9 should interact together by hydrogen bonding. Similar objections applied to paragraph [0010] of the patent. For these reasons the subject-matter of claim 9 and of paragraph [0010] had no basis in the application as filed.

VIII. The appellant lodged an appeal against that decision. With the statement setting out the grounds of appeal, the appellant filed three sets of claims as main request, first auxiliary request and second auxiliary request together with amended description pages for the auxiliary requests.

The main request corresponded to the main request on which the decision under appeal was based.

In claim 9 of the first auxiliary request the list of polymers was replaced by "the group consisting of hydrophilic polymers, hydrophobic polymers, hydrophobically modified hydrophilic polymers and hydrophilically modified hydrophobic polymers, such as alginates, alkyl-and hydroxyalkylcelluloses, carboxymethyl cellulose and its salts, carrageenan, cellulose and its derivatives, gelatin, gellan, guar gum, gum arabic, maleic acid copolymers, methacrylic acid copolymers, methyl vinyl ether/maleic anhydride copolymers, pectins, polyacrylamide, poly(acrylic acid) and its salts, poly(ethylene glycol), poly(ethylene imine), poly(ethylene oxide), poly(propylene oxide) poly(methacrylic acid), sulphonated polystyrene, poly(vinyl acetate), poly(vinyl alcohol), poly(vinyl amine), poly(vinyl pyrrolidone), poly(vinyl sulphonic acid), starches and their derivatives, styrene maleic anhydride copolymers, crotonic acid copolymers, xanthan gum, and the derivatives and copolymers thereof". In the description paragraph [0010] was replaced by a paragraph containing the list of polymers of amended claim 9.

The second auxiliary request corresponded to the main request with the deletion of claim 9 and paragraph [0010].

IX. The opponent (respondent) maintained in the reply to the statement of grounds the objection of extension beyond the application as filed against claim 9 and objected to the admittance of the auxiliary requests into the proceedings.

X. In a communication sent in preparation of oral proceedings, the Board gave a preliminary opinion on the issues related to the amendments by stating the following (point 1.1):

"The Board shares the concerns of the respondent and of the opposition division regarding the amendments. Indeed the list on page 7 cannot provide support for the specific combinations of polymers in claim 9 and in paragraph [0010], nor can the examples, which disclose very specific embodiments, be generalised beyond what can be directly and unambiguously derived from them. Moreover, the disclosure of hydrogen bonding appears on page 4 of the original description among several alternatives of a list of possible interactions and not in connection to any specific polymer."

As far as admittance of the auxiliary requests into the proceedings was concerned, it stated inter alia that no reasons had been submitted by the appellant as to why no auxiliary requests had been filed before the first instance (point 2.1, last two sentences).

XI. With letter of 30 December 2014 the appellant filed three further sets of claims as third to fifth auxiliary requests and gave arguments with regard to admittance of all auxiliary requests. The newly filed requests corresponded to the three requests on file with the deletion of the wording "by hydrogen bonding" in claim 1.

XII. The respondent countered those arguments with letters of 26 January 2015 and 29 January 2015 and filed with the latter a "Declaration of Steven M. Howdle" setting out his recollection of the oral proceedings held before the opposition division.

XIII. Oral proceedings before the Board were held on 3 February 2015.

XIV. The arguments of the appellant can be summarised as follows:

Main request - amendments

a) The application as originally filed disclosed in the first full paragraph of page 7 a group of substances which may form the interpolymer complex including poly(ethylene oxide), poly(propylene oxide), poly(vinyl acetate), poly(vinyl pyrrolidone), crotonic acid copolymers and copolymers thereof. The term crotonic acid copolymers comprised any crotonic acid copolymer, such as e.g. poly(vinyl acetate)-crotonic acid copolymer as used in the examples. The disclosure of the generic class and of the specific example provided a basis for the presence of the specific copolymer in claim 9 of the main request. The same considerations applied to the other copolymers in the list of claim 9. In other words, since the application as filed mentioned a number of polymers and gave specific examples of polymers and copolymers falling under this group, a limitation of a broad claim to specific embodiments mentioned in the description did not extend beyond the content as originally disclosed, but rather limited the application. As to the examples, it was relevant that, while specific products from specific suppliers were mentioned therein, the headings of the examples referred to the polymers in general terms. An objection under Article 100(c) EPC with reference to Article 123(2) EPC was therefore not justified.

Auxiliary requests - admittance

b) During the oral proceedings before the opposition division after discussion on the issues under Article 123(2) and (3) EPC with respect to claims 1 and 9 it was announced that claims 1-9 did not comply with the requirements of Article 123(2) EPC. The appellant had to assume that not only claim 9, but also claim 1 was found to contravene Article 123(2) EPC. As the appellant did not know why claim 1 was problematic, he was not in a position to amend claim 1 in a way which did not foil the economic focus of the patent. He was of the strong opinion that claim 1 found sufficient support in the specification as filed and accordingly it was decided not to file any auxiliary request and have the case assessed in appeal. It was only after reading the decision that the appellant understood that the revocation was based on a violation of Article 123(2) EPC by claim 9 alone, so that it was legitimate to file auxiliary requests addressing this issue with the statement of grounds. Had the appellant known that this was the only issue, the corresponding requests would have been filed at the oral proceedings. That the appellant had no abusive intention to delay the proceedings was clear from the fact that three auxiliary requests had been prepared, as announced at the beginning of the oral proceedings. In any case the objection to claim 9 had been filed by the respondent at a late stage of the opposition proceedings and an immediate reaction could not have been expected. On that basis the first and second auxiliary requests should be admitted into the proceedings. The third to fifth auxiliary requests were filed in reaction to the communication of the Board in view of the objection to hydrogen bonding as recited in claim 1 of all previous requests and were on stronger reasons also to be admitted into the proceedings.

XV. The arguments of the respondent can be summarised as follows:

Main request - amendments

a) Both claim 9 and paragraph [0010] contravened Article 123(2) EPC on the grounds that they defined certain specific polymers which were not described anywhere in the application as filed as being "complementary" to one another (by any kind of bonding, let alone by hydrogen bonding as according to the claim). The general teaching on page 7 was too vague, as it included a vast number of possible combinations and left the definition of the copolymers completely open. The examples on the other side provided a very specific teaching, which could not be generalised to the list of complementary polymers of claim 9. In respect to the examples, the headings were nothing more than a brief reference to the content of the examples themselves.

Auxiliary requests - admittance

b) During first instance proceedings the appellant was provided with a clear opportunity to file auxiliary requests that dealt with the objections to dependent claim 9 under Article 123(2) EPC. While the solution to the issue was clear and the filing of the requests would not have reduced in any way the rights on appeal, the appellant decided not to file any auxiliary request. The deliberate choice of the appellant prevented the opposition division from deciding on all the other grounds. The auxiliary requests filed with the statement of grounds could and should therefore have been submitted during the first instance proceedings and should not be admitted in appeal pursuant to Rule 12(4) of the Rules of Procedure of the Boards of Appeal. It was not credible that the appellant did not know on which objections under Article 123 EPC the main request was not allowed by the opposition division during oral proceedings. The minutes made it clear that only claim 9 had been discussed under Article 123(2) EPC and that the decision announced after deliberation referred to claim 1 only as far as Article 123(3) EPC was concerned. This was confirmed by the declaration of Mr Howdle. The situation was very similar to the one in T 23/10 of 18 January 2011 and the same conclusion should be reached, viz. that none of the auxiliary requests should be admitted into the proceedings.

XVI. The appellant requested that the decision under appeal be set aside and that the case be remitted to the opposition division for further prosecution on the basis of one of the main request, the first auxiliary request and the second auxiliary request, all filed with the statement setting out the grounds of appeal, or on the basis of one of the third to fifth auxiliary requests filed with letter of 30 December 2014.

XVII. The respondent requested that the appeal be dismissed. Furthermore, the respondent requested that none of the auxiliary requests be admitted into the proceedings. In the event that the requirements of Article 123 EPC were found to be met, the case should be remitted to the department of first instance.