T 0964/21 09-07-2024

Main request - Article 123(2) EPC

1. The appellant-proprietor's main request is not allowable because the subject-matter of claim 1 extends beyond the content of the application as filed, contrary to the requirement of Article 123(2) EPC. The corresponding reasoning in the impugned decision as well as the further arguments provided by the appellant-proprietor in the appeal proceedings are found unconvincing by the Board for reasons set out below.

When referring to the application as filed, reference is made to the published international application, WO 2014/020440 A1, underlying the patent in suit.

2. The subject-matter of claim 1 is alleged by the appellant-proprietor to be based on the combination of inter alia claims 1 and 2 of the application as filed.

Claim 1 of the application as filed is directed to a wound dressing which comprises an acquisition distribution layer, an absorbent layer and a backing layer. Claim 2 reads "The wound dressing of Claim 1, further comprising a fluidic connector configured to connect the backing layer to a source of negative pressure." According to the combination of claims 1 and 2 of the application as filed, the wound dressing comprises a fluidic connector, which means that the connector is an actual feature of, or an integral part of, the wound dressing.

However, this is not required anymore in amended claim 1 of the main request.

Claim 1 of the main request is still directed, according to its preamble, to a "wound dressing comprising" inter alia an acquisition distribution layer, an absorbent layer and a backing layer. It further specifies the wound dressing to be "characterised in that a fluidic connector (721, 731, 2410, 2420, 3500) connects the backing layer (2140, 3410) to a source of negative pressure [...]". Contrary to the wording used in the preamble, this first part of the wording of the characterising portion does not define that the fluidic connector or the source of negative pressure is "comprised" by the wound dressing. The further features in the characterising portion specify further properties of the acquisition distribution layer defined in the claim's preamble, where again the expression "comprises" is repeatedly used.

There is thus nothing in claim 1 of the main request which would define the fluidic connector to be comprised by the wound dressing.

Its subject-matter is rather directed to a wound dressing in a state of use, where a fluidic connector connects the wound dressing's backing layer to a source of negative pressure. This definition leaves it open whether the fluidic connector is a part of the wound dressing itself or whether it is provided as a separate component of a kit of parts. Hence, for example, prior to its use it constitutes a connector item with e.g. an adhesive, separate from the wound dressing and which for use is then adhered to the backing layer in order to establish the connection to the source of negative pressure. The latter embodiment covered by claim 1 of the main request is not disclosed by claims 1 and 2 of the application as filed, nor by the other dependent claims of the application which were referred to by the opposition division and the appellant-proprietor as a basis for its subject-matter. The remaining parts of the application as filed do also not disclose such generalised subject-matter as defined by the features of claim 1.

The Board therefore concludes that the subject-matter of claim 1 of the main request extends beyond the content of the application as filed, contrary to the requirement of Article 123(2) EPC.

3. The reasoning adopted by the opposition division and the arguments submitted by the appellant-proprietor are found unconvincing for the following reasons.

3.1 Contrary to the unsubstantiated statement of the opposition division by which it considered the change in wording to not substantially change the subject-matter (see the impugned decision, point 46 discussing these features, albeit in regard to auxiliary request 11), the Board considers for the reasons set out already above that the change in wording from claims 1 and 2 as filed to that of claim 1 of the main request changes the subject-matter; originally it was directed to a wound dressing comprising a fluidic connector and it changed to a wound dressing encompassing a kit of parts in a state of use.

3.2 The key question to be asked is not that as argued to a large extent by the appellant-proprietor, namely whether a fluidic connector that connects the backing layer to a source of negative pressure was directly and unambiguously derivable from the disclosure of the application as filed. Rather it has to be decided whether the application as filed discloses a wound dressing with the features of claim 1 of the main request and in which the fluidic connector is however not a feature comprised by the wound dressing, as originally defined by claims 1 and 2 of the application as filed and which were given as a basis for claim 1.

Similarly, also the question considered by the opposition division of whether the two expressions in the respective claims "configured to connect" (claim 2 as filed) and "connects" (main request) are equivalent or not is of no relevance for the point at issue here. It rather relates to another issue as raised by the appellant-opponents, namely whether the application as filed discloses a wound dressing in a state connected to the source of negative pressure. A decision on this question was however not required, as should be evident from the Board's reasoning in item 2 above.

3.3 The appellant-proprietor's core argument in regard to the matter to be decided, is that the wording of present claim 1 requires the presence of a fluidic connector which thus constituted a feature of the wound dressing. This argument fails however, since the presence of a fluidic connector in the connected state of use of a wound dressing does not necessarily mean that the connector is a part of the wound dressing itself as required by claims 1 and 2 as originally filed.

3.3.1 The appellant-proprietor's interpretation is not supported by the claim language. In regard to all the other features of the claimed wound dressing, in particular in regard to its three layers, the claim language makes consistent use of the expression "compris[ing/es]" in order to define the features of the wound dressing and its different layers.

3.3.2 A skilled person would also not understand a combination encompassing a wound dressing per se and a source of negative pressure, connected by means of a fluidic connector during use, to constitute a "wound dressing". Whereas it is indeed conceivable that a package containing (as separate parts) a wound dressing, a fluidic connector and a source of negative pressure might be labelled "wound dressing", there is no indication in the application as filed that this was indeed the meaning intended by the designation of the subject-matter of the originally filed claims 1 and 2.

3.3.3 The passages referred to by the appellant-proprietor on pages 13 and 16, i.e. in paragraphs 68 and 74 of the application as filed, do not support its argument either.

The first sentence in paragraph 68 makes a clear distinction between a pump (source of negative pressure) and a wound dressing. The second sentence thereof, on which the appellant proprietor relied in particular, stating "[T]he apparatuses and components comprising the wound overlay and packing materials, if any, are sometimes collectively referred to herein as dressings", cannot be read as a generally applicable definition of the expression "wound dressing" to comprise a fluidic connector and a source of negative pressure, even if for the sole reason that the connector and the source of negative pressure are not even mentioned here. The appellant-proprietor did not cite any other passage of the application as filed from which such specific meaning of the expression "wound dressing" in combination with the entirety of features of claim 1 of the main request would have indeed appeared.

Paragraph 74 refers to a specific embodiment of "a TNP wound treatment system comprising a wound dressing in combination with a pump" (first sentence, emphasis added by the Board), thus again confirming the common understanding that a wound dressing and a pump are separate items. The same holds true for the fluidic connector for which a specific embodiment is described further down in that same paragraph.

Hence, the cited passages of the application do not support an understanding of the wording of claim 1 of the main request to mean that the wound dressing itself comprises the fluidic connector (and the source of negative pressure) as feature(s).

3.3.4 Additionally it may be noted that whereas claim 2 of the application as filed specifies the wound dressing according to claim 1 to comprise a fluidic connector, claims 45 to 50 of the application as filed relate to a negative pressure wound therapy kit, comprising inter alia a (general) wound dressing (claim 45) and a fluidic connector attached to the wound dressing (claim 46). This confirms again that the expression "wound dressing" does not necessarily comprise a fluidic connector as a part of it.

3.3.5 Rule 43 EPC does not lead to a different conclusion.

Stipulating that the claims shall define the matter for which protection is sought in terms of the technical features of the invention, does not mean in the case at issue that all technical features mentioned in claim 1 are necessarily technical features of the wound dressing. Although not decisive by itself, this is already apparent from the fact that the fluid referred to in its preamble cannot be said to be a technical feature of the wound dressing, but instead is used to define suitability characteristics of the acquisition distribution layer. The matter for which protection is sought according to claim 1 of the main request is a wound dressing in a state of connection of its backing layer with a source of negative pressure, rather than a wound dressing per se, and does therefore not support the contention that the fluidic connector is necessarily comprised by the wound dressing.

3.3.6 The passage cited by the appellant proprietor from the EPO Guidelines for Examination (GL F-IV 3.9.1) - besides anyway not being binding on the Boards of Appeal - has no relevance for the question of disclosure of amended subject-matter in the application as filed to be decided here. The cited passage relates to requirements for claims in view of Article 84 EPC and in view of formal requirements, here in particular for kinds of claims in the fields of computer implemented inventions where all method steps can be fully implemented by generic method steps, which obviously has nothing to do with the present subject-matter. Furthermore, the actual meaning of the expression "configured to" in claim 2 of the application as filed or the limitations implied by this expression are not linked to the question of whether there is a disclosure in the filed application for a wound dressing with the feature of claim 1 of the main request not comprising such fluidic connector as a part of the wound dressing (cf. point 3.2 above).

Auxiliary request - Article 123(2) EPC

4. Since the further amendments in claim 1 of the auxiliary request, relating to the provision of an additional transmission layer, do not affect the above finding, as also acknowledged by the appellant proprietor, the patent may not be maintained on the basis of this request, also for non-compliance with the requirement of Article 123(2) EPC.

For the sake of completeness, the Board notes that under these circumstances no further reasoning is required in regard to the objection by appellant-opponent 2 contesting the admittance of this request into the proceedings.

5. Absent any set of claims meeting the requirements of the EPC, the Board can only accede to the appellant-opponents' request that the patent be revoked.

Apportionment of costs

6. The appellant-proprietor requested that the opposition division's decision as to the apportionment of costs be set aside.

The formulation of that decision is set out in the reasons of the impugned decision (cf. page 35) as follows:

".. the Opposition Division apportions to the Proprietor the costs of the remuneration of the representatives of the parties in respect to oral proceedings and for the undue delaying of the procedure in respect of late filing."

6.1 Firstly, the Board wishes to emphasise that an order on the apportionment of costs under Article 104 EPC must clearly state (at least) the kind of costs to be borne by the burdened party. The order referred to above does not in any way comply with this requirement. In this context, it should be noted that the order is so vague that it is not possible to clearly determine in particular,

(a) whether the costs for the representatives in preparing for the oral proceedings are included, and

(b) whether the costs for the representatives for both oral proceedings are included.

In that regard it is also noted that according to the Minutes of the oral proceedings on 8 October 2019 before the opposition division, the costs for both oral proceedings (i.e. for the one of 8 October 2019 and also for the later one on 26 April 2021) should be borne by the patent proprietor (cf. pages 1 and 4 of the Minutes), which however is not properly reflected in the order and cannot be assumed to be covered by that order. Furthermore, in view of the fact that parties to opposition proceedings have a right to oral proceedings, such a ruling - without any limitations of the specific costs to be borne in relation to the oral proceedings and without providing sound reasons for such a decision - would not comply with the right to be heard in oral proceedings as enshrined in the EPC.

It should also be noted that the addition in the above-mentioned formulation "and for the undue delaying of the procedure in respect of late filing" does not provide a definition of any kind of associated costs and can only be seen as a hint to the reasoning for the decision, which seemingly was based on the principle of procedural economy.

Even on the basis of the foregoing alone, the decision on the apportionment of costs is to be set aside.

6.2 Furthermore, the opposition division's decision also fails in terms of substance. Irrespective of the question of whether a decision under Article 104 EPC constitutes a discretionary decision, it should first be noted in view of the submissions of appellant-opponent 2 that discretionary decisions can also be reviewed by the Boards in terms of their merits. According to established case law, a Board should overrule a discretionary decision only if they conclude that it was taken in accordance with the wrong principles, without taking the right principles into account or in an arbitrary or unreasonable way, thereby exceeding the proper limits of its discretion (cf. Case law of the Boards of Appeal, 10th edition, V.A.3.4.1b; emphasis by the Board). A substantive review of a discretionary decision is therefore not excluded according to established case law.

6.3 According to the Minutes of the oral proceedings on 8 October 2019 the oral proceedings were adjourned due to the fact that the patent proprietor challenged that D22 constituted prior art under Article 54(3) EPC for the first time (ibid. page 4). The proprietor in fact challenged the validity of the earliest priority claimed for D22 in view of the embodiment of Figures B34A and B34B. In that regard it must be taken into account, as pointed out by the appellant-proprietor and not disputed by the appellant/respondent-opponents, that a novelty objection based on the embodiment of Figures B34A and B34B of D22 was raised for the first time in oral proceedings in relation to the then auxiliary request 13. The argument provided in the contested decision, which was also relied upon by the appellant/respondent-opponents during the appeal proceedings, according to which the priority of D22 should have been challenged by the patent proprietor earlier in the proceedings, is not convincing. Even if a novelty objection based on the embodiment of Figure 1B of D22 was already in the proceedings, this does not mean that the patent proprietor would have been obliged to consider the validity of the priorities of D22 in regard to that objection. It goes without saying that not all the embodiments of a patent application claiming more than one priority necessarily enjoy the right to all of those priorities. It should also be noted that a patent proprietor is free to choose a line of defence that seems appropriate in the light of a particular objection. The argument that the patent proprietor should have challenged (one of) the priority(ies) claimed by D22 earlier in the proceedings is therefore not convincing.

Moreover, the appellant-proprietor's line of defence is also supported by the impugned decision itself, according to which the embodiment of Figure 1B was found as being entitled to the relevant priority, but not the embodiment of Figure B34A (cf. ibid. points 59.2.1 and 59.2.2).

For the sake of completeness, it should also be mentioned that D22 was filed after expiry of the time limit for filing an opposition and was used only for the purpose of attacking novelty of claim 1 of the then main request and of the then auxiliary request 11.

Thus, the fact that the patent proprietor did not contest the validity of one of the priorities of D22 until the first oral proceedings before the opposition division cannot justify a different apportionment of costs in the present case.

6.4 No further justification for the decision on costs is recognisable in the contested decision. Although page 34 of the decision addresses the repeated and late filing of different sets of claims, which was also underlined by the appellant/respondent-opponents before the Board, it is not clear from the decision itself whether and to what extent these statements were relevant for the decision on costs. In this respect, it is noted that the Board also considers the appellant-proprietor's argument that the late filing of amended requests was also due to the late filing of the objections based on D22 to be convincing. Furthermore, it must also be taken into account that the opposition division admitted the sets of claims filed on 4 October 2019 (namely the main request and auxiliary requests 1 to 15) into the proceedings in view of the principle of procedural economy (cf. point 36 of the contested decision). The opposition division noted in particular that the number of requests had been reduced from 29 to 16, that auxiliary requests 6 to 15 corresponded to previously filed requests and that the requests did not drastically change the framework of the opposition proceedings. These findings of the opposition division were not challenged by the (appellant/respondent-)opponents.

Moreover, as addressed by the Board in the oral proceedings, it is to be noted that the main request and auxiliary requests 1 to 10 had been found to contravene Rule 80 EPC, i.e. they had not been discussed in substance. This means that only auxiliary requests 11 to 13, which corresponded to previously filed requests, were dealt with in substance during the oral proceedings before the opposition division. In view of the above, the Board does not see any procedurally abusive behaviour on the part of the patent proprietor, nor does the effort of the opponents caused by the late filing of the requests - which in any case was partly due to the late submission of the objections based on D22 - appear to be unduly high. The efforts for the preparation of the issue of admittance of the newly filed requests (main request and auxiliary requests 1 to 5) do not appear to the Board to have caused unreasonable expense to the opponents. Moreover, such preparatory work can in no way justify the award of the entire costs of the oral proceedings.

6.5 In view of the above there are no reasons that would justify a different apportionment of costs. Thus, the Board finds it appropriate that each party shall bear its own costs. Consequently, the decision of the opposition division as to the apportionment of costs is set aside.