T 0846/22 30-07-2024

1. Admissibility of the opposition and the appeal

The respondent argued that the opposition and the appeal were not admissible.

1.1 It submitted that the appellant, a UK company, had been a "dormant company" under UK law at the time of filing the opposition and had never changed this status. This meant that the appellant was not entitled to conduct any business and could not be equated to a legal person.

Under Article 99(1) EPC "any person may give notice to the European Patent Office of opposition [ ... ] in accordance with the Implementing Regulations". "Any person" is to be interpreted in line with Article 58 EPC as "any natural or legal person, or any body equivalent to a legal person by virtue of the law governing it" (G 3/99, point 9 of the Reasons, G 1/13 point 2.3.3 of the Reasons).

The status of a legal person as such, i.e. the question as to whether it has capacity to sue or be sued, is a matter of national law. The right to bring opposition proceedings, to take part in such proceedings, to file an appeal and to take part in appeal proceedings is, by contrast, a matter of procedural law governed by the EPC (G 1/13, ooint 5.3 of the Reasons with reference to G 3/97, point 2.1 of the Reasons).

The respondent questioned the status of the appellant as a legal person as such. Hence, it has to be established whether the appellant, the company European Oppositions Limited, in particular at the time of filing the notice of opposition and the notice of appeal, had the status of a legal person.

Section 1169 of the Companies Act 2006 which applies throughout the UK defines a dormant company. A company is dormant during any period in which it has no significant accounting transactions. A dormant company can be reactivated. Engaging in significant transactions may result in a dormant company losing its dormant status.

Although inactive, a dormant company is not struck off, but remains on the Companies House register. This means that a dormant company maintains the status of a legal person. The Board agrees with the conclusion drawn to this effect in T 184/11 (point 2.2 of the Reasons).

It follows that the appellant had the status of a legal person at the time of filing the notice of opposition and throughout the opposition and appeal proceedings. The respondent's argument in this respect is therefore not convincing.

1.2 The respondent also argued that the appellant could not have paid the opposition or the appeal fee and could not have appointed an authorised representative. Moreover, it was evident that the appellant had been acting on behalf of a third party with the intention of avoiding any liability for possible costs apportioned to the appellant under Article 104 EPC. This amounted to an abuse of procedure.

However, whether the appellant engaged in transactions which could have led to the loss of its dormant status goes beyond the assessment of its status as a legal person. The assessment of potential financial relationships between a dormant company and an appointed representative is of no relevance to establishing the legal status of the company as a legal person either.

Moreover, the opponent's representative was appointed in accordance with the requirements of the EPC. Hence, there is no reason for the Board to doubt that the representative was duly authorised. The remaining provisions under the EPC for the admissibility of the opposition and appeal, including the payment of the relevant fees, were also complied with.

As regards the contention that the appellant had been acting on behalf of a third party with the intention of avoiding any liability for possible costs apportioned to the appellant under Article 104 EPC, the Board notes that acting on behalf of a third party cannot be seen as a circumvention of the law unless further circumstances are involved (G 3/97, point 3.2 of the Reasons) and there is no requirement under the EPC that a party be equipped with sufficient financial means to comply with a merely hypothetical costs order. Moreover, the EPC does not offer the patent proprietor any kind of guarantee that an opponent will be able in fact to reimburse costs awarded against him (G 3/97, point 3.2.6 of the Reasons).

For these reasons, the Board does not see any abuse of procedure by the appellant which might render the opposition and/or the appeal inadmissible.

1.3 In conclusion, the respondent's requests that the decision under appeal be set aside and the opposition be held inadmissible or that the appeal be held inadmissible must be refused.

2. The subject-matter of the patent

The patent relates to a metered dose inhaler for dispensing aerosol doses. The doses are to be taken into the body of a patient upon inhalation, via the nose or mouth, and then delivered to the lungs. Metered dose inhalers are typically used for the treatment of respiratory infections and disorders. Asthma treatment is a particularly commonly use (paragraph [0003] of the patent).

A metered dose inhaler according to claim 1 of the request found allowable by the Opposition Division and a triggering unit of the inhaler according to the claim are schematically depicted in Figures 2 and 3 of the patent, reproduced below.

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The claimed metered dose inhaler comprises an actuation housing (2), a mechanical dose counter (10), a triggering unit (11) and a processing unit (19).

The actuation housing comprises a mouthpiece (3) for inhalation of the aerosol and is adapted to receive a canister (4) configured to move from a rest position to an activation position. In the activation position a valve (7) of the canister, positioned at a valve end of the canister, is depressed against a bottom portion (9) of the actuation housing such that an aerosol dose is released.

The mechanical dose counter comprises an indicator member constructed and arranged to undergo a predetermined count indicating motion when an aerosol dose is released.

The triggering unit is positioned within the actuation housing opposite to the mouthpiece and is adapted to receive the canister in between the triggering unit and the mouthpiece. The triggering unit is for triggering at least one electrical switch when the canister is moved from the rest position to the activation position. This generates an electrical signal. The triggering unit also comprises trigger members (13, 13a, 13b) for triggering the at least one electrical switch. The trigger members are designed as flexible tongues each having an end portion.

The processing unit is for processing the signal generated by the switch upon being triggered.

According to the patent (paragraphs [0012] to [0014]) it is advantageous in terms of reliability and energy consumption to have both a mechanical dose counter for the basic counting function and an electrical trigger unit in combination with a processing unit for additional functions such as monitoring or evaluation functions.

3. Sufficiency of disclosure

The appellant argued that the patent only disclosed an arrangement with two trigger members which operated on two respective switches and that there was no teaching about how the skilled person could implement any different arrangements including any arbitrary combination of a plurality of trigger members with a plurality of switches. Hence, the subject-matter of claim 1 of the request found allowable by the Opposition Division was not sufficiently disclosed.

This objection is not convincing. While it is true that the patent discloses in detail embodiments with two trigger members (13) and two switches (12), the person skilled in the art would have known how to provide other combinations of trigger members and switches, as this is a matter of common mechanical design. The embodiments shown in Figures 3 to 10 show different arrangements of trigger members which the person skilled in the art would have considered when devising other embodiments as claimed.

It follows that the appellant's objection of lack of sufficiency (Article 83 EPC) does not prejudice maintenance of the patent on the basis of the request found allowable by the Opposition Division.

4. Inventive step

4.1 Starting from D1 in combination with common general knowledge or D2, the appellant argued against claim 1 of the request found allowable by the Opposition Division involving an inventive step.

It is common ground that D1 discloses (Figures 1 and 2 reproduced below and paragraphs [0059] to [0064]) a metered dose inhaler (100) comprising an actuation housing (101) with a mouthpiece (102) and adapted to receive a canister (103), a mechanical dose counter (105), a triggering unit (104) positioned within the actuation housing opposite to the mouthpiece for triggering at least one electrical switch (by a single actuator 202), and a processing unit.

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D1 does not disclose that the triggering unit comprises trigger members designed as flexible tongues each having an end portion for triggering the electrical switch.

The technical effect of the distinguishing feature is that more parameters of an actuation can be recorded, such as the speed of actuation of the inhaler (paragraph [0017] of the patent).

This solves the objective technical problem of better monitoring delivery of the aerosol doses to a patient by the triggering unit. The problem formulated by the appellant, i.e. how to provide an alternative configuration or design for any trigger members, is not acceptable as it does not take the technical effect of the distinguishing feature into account.

4.1.1 The person skilled in the art would have had no incentive from common general knowledge to provide more than one trigger member in order to solve the objective technical problem. There is simply no evidence in this respect.

4.1.2 D2 discloses a metered dose inhaler with a triggering unit comprising two trigger members designed as flexible tongues (514 and 516, Figure 4, reproduced below) each having an end portion for triggering electrical switches. Paragraph [0046] teaches that such trigger members make it possible to monitor more parameters of the actuation of the metered dose inhaler.

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While D2 seems to address the problem of providing better monitoring of the delivery of the aerosol doses, it has to be noted that D1 stresses the advantages of the possibility of retrofitting a conventional metered dose inhaler with a triggering unit. The triggering unit, denoted "event recordal device", can be "inserted into a conventional inhaler as an add-on device or module. The small footprint of the event recordal device allows conventional inhalers to be used with no modifications" (paragraph [0061]). Accordingly, D1 teaches that while it is desirable to "provide accurate information regarding the usage patterns and times of the usage" (paragraph [0005]), "it is necessary to maintain the compact size of dispensing devices. It is also desirable to minimize the need for regulatory approval which would increase the costs associated with the device" (paragraph [0007]). Hence, the appellant's argument that maintaining compactness was merely a general goal in the inhaler industry is not convincing. Maintaining compactness is specifically taught as an important requirement by D1.

On the basis of this disclosure, the person skilled in the art would not have implemented the relatively cumbersome triggering unit disclosed in D2 in the metered dose inhaler of D1, because this would have gone against this important requirement taught by D1.

It follows that the appellant's objection of lack of inventive step (Article 56 EPC) starting from D1 is not successful.

4.2 The appellant also argued starting from D2 in combination with common general knowledge, D1 and/or D3.

It is common ground that D2 does not disclose a mechanical dose counter in addition to the triggering unit for triggering electrical switches.

This distinguishing feature addresses the objective technical problem of improving the reliability and energy consumption of a metered dose inhaler. This is because the mechanical dose counter can be used for the basic counting function, and an electrical trigger unit in combination with a processing unit can be used for additional functions such as monitoring or evaluation functions (paragraphs [0012] to [0014] of the patent).

The appellant's argument that the person skilled in the art would have implemented the distinguishing feature in the device of D2 in view of the teaching of D1, common general knowledge or D3 is not convincing. None of D1, common general knowledge or D3 teaches the provision of a mechanical dose counter for solving the objective technical problem. D1 mentions a mechanical dose counter only as a standard component of a conventional metered dose inhaler. D3 does not disclose a mechanical dose counter at all. It is therefore irrelevant whether mechanical dose counters and electric/electronic dose counters could coexist or where a mechanical dose counter could be implemented in the inhaler of D2. The person skilled in the art would not have had any motivation for such implementation.

It follows that the appellant's objection of lack of inventive step (Article 56 EPC) starting from D2 is not successful either.

4.3 In conclusion, the appellant's objections of lack of inventive step (Article 56 EPC) do not prejudice maintenance of the patent on the basis of the request found allowable by the Opposition Division.

In reaching this conclusion, it is of no relevance to establish whether the "at least one electrical switch" is part of the subject-matter of claim 1, as questioned by the appellant.

It is not necessary to consider the admissibility of some documents which the Opposition Division had not admitted into the proceedings either, since the appellant has not raised any objection on the basis of these documents in the appeal proceedings.

5. Requests for apportionment of costs

The respondent requested that the Board apportion some of the costs it had incurred to the appellant.

According to Article 104(1) EPC, each party to the opposition proceedings must bear the costs it has incurred, unless, for reasons of equity, a different apportionment should be ordered.

5.1 The respondent argued that its costs from the first and second instance proceedings should be charged to the appellant because these costs were incurred through an abuse of procedure by the appellant, namely acting throughout the opposition and appeal proceedings whilst being a dormant company.

However, the Board has concluded that there was no abuse of procedure in this respect. It follows that this respondent's request has to be refused.

5.2 The respondent also argued that, in view of T 475/07, its costs incurred for the preparation of the oral proceedings before the Board should be charged to the appellant.

The Board notes that, although it would have been appropriate for the appellant to inform the respondent and the Board of its intention not to participate in the oral proceedings at an earlier time, the oral proceedings would have had to take place anyway. This is because of the respondent's requests for oral proceedings "in the event that the Board of Appeal does not intend to set aside the decision of the first instance" (Reply, point 1). Hence, in contrast to the case underlying T 475/07, the appellant's conduct had no impact on the necessity of holding oral proceedings.

As regards the respondent's argument with reference to the Board's preliminary opinion, it is pointed out that, even when all the parties attend the oral proceedings, it is possible that not all the issues addressed in the preliminary opinion will be discussed, since for some of them the parties may refer to their written submissions. Moreover, the respondent could not be sure that the preliminary opinion, given its preliminary nature, would be maintained in the oral proceedings. Deciding not to be prepared for an issue which could potentially be discussed at the oral proceedings, irrespective of the Board's preliminary view on the issue, always involves some risk and it is the parties' responsibility to decide what to prepare for. In any case, it could not be asserted beforehand that the Board's preliminary opinion would have rendered the oral proceedings unnecessary.

For these reasons, the Board does not consider it equitable to order the apportionment of costs in favour of the respondent. Hence, this request by the respondent has to be refused too.