T 1137/97 (Marek's Disease Virus Vaccine/AMERICAN HOME PRODUCTS CORPORATION) 14-10-2002

Admissibility of the appeal by Duphar International Research B.V.

1. The original opponent Duphar International Research B.V. filed a Notice of Appeal on 13 November 1997, duly paid the appeal fee at the same time, and filed a Statement of Grounds of Appeal on 14 January 1998. At the time of taking these actions no change of opponent had been requested or entered at the EPO, so as opponent of record at the EPO, Duphar International Research B.V. was and remained at these times a party to the opposition proceedings. This appeal is in accordance with Articles 106, 107 and 108 as well as Rule 64 EPC, and is thus admissible.

Admissibility of the appeal by AHPC

2. During the pendency of the present appeal case following a request to enter American Home Products Corporation (AHPC) as successor to the original opponent, and a request by the EPO for evidence supporting such a transfer, a statement dated 18. May, 1998 signed by the managing director of Duphar Research International B.V. was filed on 27 May, 1998, indicating that the entire health business assets of this company had been transferred to AHPC under a purchase agreement with the transaction being closed on 28 February 1997, and confirming that the relevant business assets of Duphar International Research BV in the interests of which the opposition was filed had been transferred to AHPC. This statement was accepted by the formalities officer then charged with recording transfers of oppositions in EPO Directorate General 2, as sufficient evidence of the transfer and AHPC entered as successor to the original opponent with effect as from 27 May 1998.

3. The factual situation referred to in the statement is in accordance with the factual situation regarded as making transfer of an opposition permissible, even though the transferor still continued in existence, in Enlarged Board of Appeal decision G 4/88 (OJ EPO 1989, 480). The respondent has provided no evidence that the factual situation is not as given in the statement. That Duphar Research International B.V. still continues in existence is irrelevant.

4. For the purpose of EPO proceedings, the effective date of the transfer of an opposition must be taken as the date when the transfer has been requested at the EPO and adequate evidence provided. Here this is 27 May 1998. As an opponent is not required to have any interest to file an opposition, a transfer of an opposition is something that has to be requested at the EPO together with supporting evidence before it can take effect. This is also conducive to procedural certainty as to who are the appropriate parties.

5. AHPC is thus to be treated as the legal successor of the original opponent Duphar International Research B.V. only as from 27 May 1998.

6. As AHPC did not become the legal successor to the original opponent until 27 May 1998, it cannot at the time of filing its own Notice of Appeal in November 1997 be regarded as a party to the opposition proceedings (whether as original opponent or as successor to an original opponent), and accordingly it was not a person entitled to appeal, pursuant to Article 107 EPC, the decision of the opposition division. The appeal of AHPC in its own name is thus inadmissible.

7. However as from 27 May 1998 AHPC is to be treated as the successor to the original opponent and appellant Duphar International Research B.V., and as such is entitled to partake in the appeal proceedings.

Availability to the public of document (D1)

8. Though document (D1) had already been cited in the search report from the EPO, it was argued in the opposition that it had been inadequately considered during examination. In response the patentee challenged it being prior art at all, and submitted evidence from three different libraries in the Netherlands, including the opponent's, that the copy of document (D1) present in those libraries, reached those libraries only after the priority date of the patent in suit (see point 3 of the decision under appeal).

9. At the appeal stage there was much more extensive evidence available from both parties. The appellant relies in particular on document (D20), a letter from the Research Leader of the Avian Disease and Oncology Laboratory, East Lansing, Michigan, of January 12, 1998 addressed to AHPC reading:

"To Whom It May Concern:

Our facility is and has been a recipient of the journal "Avian Disease", a publication of The American Association of Avian Pathologists.

The handwritten notation of "Recvd 20 DEC 90" in the lower left hand corner of the front issue identified as Avian Diseases, vol. 34, no. 4, October-December 1990, per the attached, indicates that this issue of that journal was received and handled in our facility on that date, and ordinarily, it would have been available at our facility to anyone who requested to see it from that date forward. At the time in question this dating was done by hand.

Sincerely,"

10. The evidence given in this letter is not direct evidence of the date of receipt: such direct evidence could only be given by the person who made the handwritten date marking, assuming that he or she could remember the occasion. The page submitted also bears near top centre a rubber stamp

"LIBRARY COPY

REGIONAL POULTRY RESEARCH LABORATORY

3906 EAST MT. HOPE ROAD

EAST LANSING, MICHIGAN 48823"

but, as commented on by the respondent, there is no connection between this and the handwritten date of receipt. The evidence here for receipt on 20 December 1990 is certainly not as extensive as in a typical case of proof by circumstantial evidence. In such a case there is normally evidence of a date stamped on the journal together with confirmation by a librarian that the date stamp is adjusted each working day to the appropriate date, and the journal after such stamping is laid open for public inspection. Where the date is critically close to the priority date, there is ideally also evidence that the date of receipt stamped in the journal is the same as the date of receipt for that journal entered in a separate record kept of journals received. Such evidence allows the accuracy of the date to be inferred from the presumption that this accurate dating routine was followed also in the particular case.

11. If, as here, there is only a single handwritten entry on the journal itself, any presumption in favour of its accuracy is much weaker, because the dating does not depend on a mechanical routine. The case here is further unusual in that the statement as to routine dating, is not from a librarian but from a Research Leader who, co-incidentally, is a co- author of the article in this issue relied on, and a member of the editorial board of the journal. The librarian of the (by then) MidWest Area Avian Disease and Oncology Laboratory, East Lansing who confirmed in a fax dated August 28, 2002 (document (E)) that there is a handwritten received date of December 20, 1990 on the cover of the issue of Avian Diseases in question in that library, says nothing about what, if anything, the practice was relating to making such entries.

12. The respondent has submitted evidence (document F) showing that the publishers of "Avian Diseases" mailed a total of 1841 copies of the issues in question on December 19, 1990, a Thursday. The priority date here is Monday December 24, 1990. Apart from four copies, mailed first class mail, US domestic copies were mailed via 2nd class and copies for foreign countries at surface rate. For a recipient, Farrell Library, Kansas State University, located in the same state, Kansas as the publishers, the date stamp of receipt is Dec 27, 1990 (Document B). For a recipient in the same location as the Regional Poultry Research Laboratory, namely Michigan State University Libraries, East Lansing, the receipt date is given as January 4, 1991 (Document D). There is no evidence that anybody received a copy of this issue before 24 December 1990, the priority date in question, other than the handwritten date on the cover of the copy in the Library of the Regional Poultry Research Laboratory, East Lansing.

13. While four issues were sent by first class mail, there is no evidence as to when these where received, or even that any was sent to someone who can be regarded as a member of the public. Of the four recipients of first class mail, one is described as Postmaster, another as business manager, and a third has a name identical to the editor of the journal.

14. Given the choice between assuming that the handwritten date correctly entered, or assuming that one out of a thousand US 2nd class postal deliveries at Christmas time of a journal was miraculously much faster than all other such deliveries, the board has no hesitation in considering that on all the evidence there is no case made out that an issue of this journal was received on 20 December 1990 or any other date before the priority date of 24 December 1990. Thus document (D1) does not form prior art pursuant to Article 54(2) EPC.

Admissibility of documents (D10) to (D14) into the proceedings

15. The next matter to be considered is whether, notwithstanding such lateness, documents (D10) to (D14) (see paragraph XV supra) should be admitted on the grounds of relevance. Without entering into details, the board considers that the contents of at least document (D14) appear prima facie as relevant as the contents of the document (D1), and there is no dispute that document (D14) was made available to the public before the priority date. The contents of document (D1) were considered by the opposition division as potentially the most relevant state of the art, but could not be relied on as document (D1) was not shown to be a prior publication. Like document (D1), the newly-filed document (D14) discloses growing serotype 2 MDV (HN and GM-1) in a cell culture, from which sufficient cell-free virus to prepare a vaccine can be obtained (see Table 1, wherein up to 76,100 PFU of cell-free serotype 2 MDV/ml are obtained). Therefore, if the contents of (D1) were "central" to the novelty and/or inventive step of the subject-matter of the claims at issue, in the board's view, document (D14) must potentially be considered as highly relevant.

16. The respondent, while quite properly objecting to the admissibility of the new evidence on procedural grounds, could not satisfy the board during the oral proceedings that the new documents were not more relevant than the earlier documents. Accordingly, on the criterion of relevance, which has been the prime criterion hitherto used by the boards of appeal for admitting new documents into the proceedings, these new documents should be considered. The board would comment that under the new Rules of Procedure of the Boards of Appeal applicable to appeals filed after 1st January 2003 the criteria for admitting new documents are stricter, and if these rules had already been applicable in this case the result might have been different.

17. The new evidence is of such weight that the case should be remitted to the first instance so that it is open to consideration at two levels of jurisdiction.

Request for apportionment of costs

18. In a number of appeal board decisions it has been decided that the late filing of a relevant document by one party, without giving any convincing explanation for the late introduction of the document, normally calls for an apportionment of costs (Article 104(1) EPC) in the other party's favour (see for example T 326/87, OJ EPO, 1992, 522, reasons point 2.3).

19. The Board notes that the notice of opposition by the appellant was received on 2 May 1995 and that documents (D10) to (D14) were introduced into the proceedings with a letter dated 13 September 2002, one month before oral proceedings took place.

20. An earlier introduction of document (D14), which unlike document (D1), undoubtedly belongs to the prior art, would likely have avoided many of the arguments that have arisen, and would have made preparation for the oral proceedings before the board less complicated or even avoided the need for such oral proceedings. In these circumstances the board considers it equitable to make an apportionment of costs in favour of the respondent of Euro 2,500 (two thousand five hundred). While some extra costs will have been incurred, an exact investigation of the amount is a matter of near impossibility and would be far more burdensome to all parties than the board fixing an amount. Thus the board has exercised its discretion under Article 111(1) EPC to itself set the amount.

21. The decision under appeal is set aside only insofar as it rejected the opposition under Article 102(2) EPC. The decision on costs in the decision under appeal, was not challenged on appeal, and remains in effect.