T 448/09 – Devoid Of Object

The patent proprietor filed an appeal against the decision of the Opposition Division (OD) to maintain the patent in amended form.

The OD had also taken a decision on the apportionment of costs:

In its statement of ground of appeal, the patent proprietor requested the Board to maintain this decision.

This gave the Board the opportunity to explain the extent of the devolutive effect of appeals:

[7] The appellant requested to maintain the decision with respect to the apportionment of costs and the request for fixing costs as referred to in paragraph 5 of the interlocutory decision in opposition proceedings dated 5 December 2008.

The Board, however, observes that this part of the decision of the opposition division has not been appealed. The devolutive effect of an appeal before a board extends only to the part of the impugned decision which is indicated in the notice of appeal as provided in R 99(1)c). This in turn implies that the part of the impugned decision not indicated in the notice of appeal becomes final on expiry of the time limit for filing an appeal and cannot later become an object of the appeal proceedings.

In the present situation, the aspect of the decision relating to the apportionment of costs was not appealed and is thus res judicata. The appellant’s request to maintain the decision with respect to the apportionment of costs is thus devoid of object.

Similarly, the appellant’s request to maintain the decision with respect to the fixing of costs is devoid of object since no such decision has been taken so far. As specified under point 5(d) of the decision under appeal the OD shall, on request, fix the amount of costs to be paid under a final decision apportioning them. Although the decision concerning the apportionment of costs has become final, no request regarding the fixing of costs has yet been filed.

Should you wish to download the whole decision, just click here.

The file wrapper can be found here.

T 605/09 – Paraphrase

This appeal was against the rejection of the opposition by the Opposition Division.

The decision contains an interesting paragraph on the novelty of the main request, claim 1 of which read:

A method for improving activity in a pet, the method comprising administering to the pet a nutritional agent which promotes the growth of bifido- and lactic-bacteria in the gastro-intestinal tract of the pet.

[2.1] Claim 1 of the main request is directed to:

• a method for improving activity in a pet,
• comprising administering to the pet a nutritional agent,
• which promotes the growth of bifido-and lactic-bacteria in the gastro-intestinal tract.

The nutritional agents used are known prebiotics, including oligosaccharides, probiotic micro-organisms, or a fermentation product thereof […].

[2.2] Claim 1, although drafted as “method of improving activity in a pet”, is undoubtedly framed so as to protect the “use” of the known nutritional “for improving activity in a pet”, that is to say, the claim is to be understood as a second non-medical use claim. This is in fact how the parties and the opposition division interpreted the claim throughout the opposition proceedings.

According to decision G 2/88 novelty within the meaning of A 54(1) can be acknowledged in cases where the discovery of a new technical effect of a known substance leads to an invention which is defined in the claims in terms of the use of that substance for a hitherto unknown, new non-medical purpose reflecting such effect, even if the only novel feature defined in the claims is the purpose for which the substance is used.

It is then to be decided whether the claimed improvement of activity in a pet is a new technical effect in terms of G 2/88.

[2.3] The novelty of claim 1 was contested by the appellant during the appeal proceedings having regard inter alia to the disclosures of D4, D6 and D7.

[2.4] D4 discloses the use of pullulan and/or dextran as growth-promoting agent for bifid bacteria […]. Although D4 does not disclose that pullulan and dextran promote the growth of lactic-bacteria, they are in fact growth-promoting for lactic bacteria, as evidenced by D22, D23 and D24. The agent can exert its activity in domestic animals such as dogs and cats […] and is said to be very useful, inter alia, in the maintenance and improvement of health […].

D6 discloses a pet diet which alters the function and morphology of the gastrointestinal tract in ways which are beneficial to the animal’s health and well-being […]. The diet comprises fermentable fibres such as fructooligosaccharides or inulin […], both being nutritional agents which promote the growth of bifido- and lactic-bacteria in the gastro-intestinal tract […].

D7 discloses the use of sucrose thermal oligo-saccharides to increase the number of bifidobacteria and lactobacilli within the gastrointestinal tract […]. The nutritional agents of D7 are used to enhance the growth rate and health of animals, including dogs and cats […].

[2.5] Thus, neither D4, D6 nor D7, nor any other cited prior art, contains an explicit disclosure that these nutritional agents have the claimed capability of improving the activity in a pet.

[2.6] The assessment of novelty depends on the answer to the question whether or not this effect, i.e. the capability of the nutritional agents to improve the activity in a pet, which is not verbatim disclosed in the state of the art, can confer novelty to the subject-matter of claim 1 in view of the conclusions laid down in G 2/88 […].

[2.7] In the board’s judgement this is not the case here because the improvement of the activity of the pet does not represent a newly discovered technical effect of the nutritional agents for the following reasons:

[2.7.1] There is undeniably a correlation between improving health of a pet and its (physical) activity. As pointed out by the appellant, every dog or cat owner knows that a primary indicator of the health of a dog or a cat is its level of activity. In particular, it is well known that lethargy or inactivity are an indicator of illness. This self-evident truth is reflected, for example, in D20, in which the state of health of a cat is assessed by means of a modified “Karnofsky” score. The levels of playing and social activity in the cat contribute to the overall score, such that increased activity is taken as an indicator of improved health. The health improvement disclosed in D4, D6 and D7 results inherently in an increase of the activity of the pet.

[2.7.2] In fact the alleged newly discovered effect of improving pet activity is necessarily correlated to the known one. In other words, the claimed effect was already manifest and could not have been overlooked by a pet owner when feeding the compositions of D4, D6 or D7 to its pet.

Hence, the effect relating to improving pet activity is not a new technical effect in the sense of G 2/88 and cannot confer novelty on the subject-matter of granted claim 1 over the disclosure of D4, D6 and D7.

[2.8] The respondent maintained that an improvement in the health of a pet did not mean that the activity of the pet was increased. The claimed improvement in activity in a pet was not necessarily correlated with the known improvement of health and could be clearly distinguished therefrom.

[2.9] The board cannot accept this argument for the following reasons:

[2.9.1] It is correct that the prior art does not mention the wording “improving activity”. It is however self-evident that an improvement of health results in increased activity as explained above. Calling the “improvement of health” which is disclosed in D4, D6 and D7 “improving activity” is only paraphrasing a known effect. Specifically pointing to this effect cannot be considered as an additional piece of knowledge about the known use of the nutritional agents because it is only the rewording of a known effect. The above considerations are in line with the conclusions in decision T 254/93 [4.8] where it is stated that “the mere explanation of an effect obtained when using a compound in a known composition, even if the effect was not known to be due to this compound in the known composition, cannot confer novelty on a known process if the skilled person was aware of the occurrence of the desired effect”.

[2.9.2] Furthermore, the patent in suit associates health improvement with improved activity. In examples 1 and 4 the increased level of activity is associated with effects related to an enhancement of health (a healthy look, shinier coats, brighter eyes). Moreover in examples 2 and 3, where arthritic (i.e. ill) dogs were used, the improvement of activity can again not be separated from the known improvement of health.

[2.9.3] Finally, it is noted that the patent attributes the improvement in activity to the increased production of nutrients and/or absorption of nutrients due to the increasing concentration of bifido- and lactic-bacteria, which provide the pet with better nutrition and more energy […]. This is indeed the known effect of the used prebiotic and probiotic microorganisms. The ability to improve glucose metabolism and enhance nutrient absorption in animals is the reason for its beneficial use for improving health […].

[2.10] For these reasons the subject-matter of claim 1 of the main request is not novel.

The patent was finally revoked.

Should you wish to download the whole decision, just click here.

The file wrapper can be found here.

J 29/10 – No Country For Old Men

The present appeal was filed against the decision of the Examining Division (ED) not to reimburse a fee for further processing. The facts of the case can be summarised as follows:

On January 13, 2009, the ED had informed the applicant on its doubts regarding the patentability of the claimed subject-matter and had given him four months for remedying the deficiencies.

On April 27, 2009, the applicant requested a two-month extension of the time limit because the communication between the Swiss applicant, the inventor (residing in Great Britain) and the German representative needed more time.

On July 23, 2009, the applicant requested another two-month (or at least one-month) extension of the time limit :

“Unfortunately, it is necessary to respectfully request to

e x c e p t i o n a l l y

extend the time limit for responding to the communication by another two months, i.e. until

September 23, 2009,

or at least by one month.

The reason for this request is that the undersigned has to cope with an unusually high work load.

a) Until the end of 2007, patent attorney Dr. S. had dealt with the cases of the Krohne company, but he then left [the law firm]. After the departure of patent attorney Dr. S. the undersigned is the only professional representative dealing with the Krohne cases in this association.

b) The undersigned has had to deal with very unusually time consuming cases over the last months, i.e.

ba) three law suits pending before the Düsseldorf Regional Court, one before the Frankfurt Regional Court, another one before the Regional Appellate Court in Karlsruhe and one pending appeal against refusal of leave to appeal (Nichtzulassungsbeschwerde) before the Federal Supreme Court;

bb) three nullity proceedings pending before the Federal Patent Court and another two nullity proceedings pending before the Federal Supreme Court;

bc) two cancellation proceedings pending before the German Patent Office and cancellation proceedings pending before the Federal Patent Court;

c) This situation has the consequence that the undersigned – who is sixty-nine years old – works about 65 to 70 hours per week on average, normally also on Saturdays and often also on Sundays.

d) Very much like the undersigned, some Examiners or EDs of the EPO have to cope with  a great work load, which entails that often search reports or communications have to be waited for for a long time. In this situation, it would be “simply nice” (“einfach schön”) if the EPO could show understanding for the above mentioned situation of the undersigned.”

On July 31, 2009, the ED dismissed this request as unsufficiently justified.

On November 10, 2009, the applicant requested further processing and reimbursement of the fee for further processing.

The request for further processing was granted. On December 7, 2009, the ED informed the applicant that the request for reimbursement was likely to be refused and requested him to comment within a time limit of two months.

On February 8, 2010, the applicant requested a two-month extension of the time-limit, which was granted. On April 16, 2010, the applicant requested two more months – because of an “extreme work load” – and again the ED granted the request. The third request for two more months, filed on June 17, 2010, was, however, refused, and an appealable decision was issued on August 5, 2010.

The applicant then filed an appeal.

Here is what the Legal Board had to say:

*** Translation of the German original ***

Admissibility of the appeal

[1.1] As a rule, decisions of the ED are appealable, provided that they terminate proceedings, A 106(1). It is true that from a procedural point of view a request for reimbursement of the fee for further processing is an auxiliary request (Nebenantrag) which has to be decided upon within the framework of a substantive final decision. Insofar it has already been decided that an applicant whose application was deemed to be withdrawn (nach Verfall seiner Anmeldung) because he had not taken some required action in due time can first request further processing pursuant to A 121 and has to pay the corresponding fee for further processing. He then can request reimbursement of the fee and, thereby, implicitly request a judicial review of the question whether the refusal of the extension of the time limit pursuant to R 132(2) was lawful (cf. J 37/89 [3.5]). Insofar as an applicant is adversely affected by an isolated refusal of the request for reimbursement – as in the present case – a separate appeal against this decision is admissible (cf. J 37/89 [4.2-3]).

[1.2] Irrespective of the fact that the representative of the appellant himself bears the costs for the appeal proceedings, the Board considers – in favour of the appellant, in the name of which the appeal has been filed – that it is the appellant itself and not its representative – who, from the procedural point of view, is not adversely affected – that is party to the appeal proceedings.

[1.3] The other requirements of A 106 to 108 are fulfilled; the appeal is admissible.

Allowability

[2.1] The impugned decision is based on the fact that the requested further processing pursuant to A 122 [sic] has created the duty for the appellant to pay the corresponding fee for further processing after [the appellant] had missed the time limit for filing the required comments in response to the communication of the ED dated May 16, 2008, which had led to the application being deemed to be withdrawn according to A 94(IV). There had not been any reason to reimburse [the fee] because the refusal to extend the time limit was legitimate. The alleged excessive work load on the representative did not constitute particular circumstances that could justify an exceptional extension beyond six months.

[2.2] Pursuant to R 132(2) periods specified by the EPO, which, normally are neither less than two nor more than four months, and, in certain circumstances, up to six months, may be extended upon request. The Guidelines for examination, E-VIII 1.6, further explain that for any communication raising a matter of substance – such as in the present case – a request for extension, even if filed without reasons, should normally be allowed if the total period set does not thereby exceed six months. However, according to the Guidelines, a request for a longer extension – especially if the total period set exceeds six months – should be allowed only exceptionally, when the reasons given are sufficient to show convincingly that a reply in the period previously laid down will not be possible. The Guidelines cite examples for such exceptional circumstances : the fact that a representative or client is so seriously ill that he cannot deal with the case in time, or the need to perform extensive biological experiments or tests. On the other hand, [the Guidelines] expressly state that leaves or pressure of other work should not be accepted as a sufficiently exceptional circumstance.

[2.3] The Guidelines for Examination in the EPO are based on the power entrusted to the President of the EPO in application of A 10(2)(a) to adopt internal administrative instructions. They are not legal provisions but contain instructions regarding practical and procedural aspects and, according to their General Part, point 3, serve as general instructions intended to cover normal occurrences, in order to render the practice of the Office as uniform as possible, in view of creating and maintaining legal security. The concretisation of the “special cases” referred to in R 132(2) by means of the examples of a “serious illness” or extensive biological experiments as well as leaves or pressure of other work, respectively, is appropriately based on criteria related to predictability of and the possibility to avoid the particular circumstances, for the person concerned in the individual case.

[2.4] The appellant has not persuasively exposed sufficient reasons for its opinion that the rules for extending time limits are “unlawful, and in any case inappropriate”, nor does the Board see any such reasons. Insofar as the appellant requires a modification of the “system for time limits introduced by the Notice of the Vice-President of the Directorate-General 2 of the EPO of February 28, 1989”, by referring to some selected individual cases and justified by the fact that the EPO itself had an excessive work load because applications or required submissions had not been dealt with in a final manner even after several years, and, therefore, invites [the EPO] to exercise its discretion in dealing with requests for the extension of time limits in a less restrictive manner, this objection cannot succeed.

[2.4.1] As a matter of fact, the discretion (Ermessensrahmen) referred to [by the appellant] has been introduced by the Guidelines for examination in the EPO, part E-VIII 1.6 based on the above mentioned power [of the President of the EPO] pursuant to A 10(2)(a).

[2.4.2] This discretion has been referred to in point 4 of the Notice of the Vice-President of the Directorate-General 2 of the EPO of February 28, 1989 (OJ EPO 1989,180), but it is expressly stated that requests for a longer extension, after expiration of a total period of six months, will in future be strictly applied and that such requests will normally be refused.

The established case law of the Boards of appeal has confirmed this strict application of time limits in view of the absolute necessity for speedy proceedings (see J 12/07 [2.2] and, for appeal proceedings, T 79/99 [2.1]). The Board fully agrees with this [approach]. It may well be that in individual cases there can be unsatisfying effects when the chronology of a case is considered. However, it is not the object and purpose of Guidelines for examination to exclude such situations.

[2.5] The way in which the ED exercises its discretion regarding the handling of requests for the extension of a time limit pursuant to R 132(2) should be inspired by these indications. Insofar the Guidelines can be used as a help for interpretation, from which [the ED] can depart in individual cases where this is justified (see also T 1388/10). Insofar it may exercise its discretion in favour of the parties, in cases which urgently require an exception with respect to the situations where the rule does not allow [an extension] (Regelversagungstatbestände). However, normally this will not be the case in the situations mentioned in the Guidelines, such as holidays or – as in the present case – excessive work load.

[2.6] Seen in this light, the impugned decision is not to be objected to. In particular, the Board cannot find any fault in the way the ED has exercised its discretion. Even in principle the excessive work load mentioned by the representative of the appellant cannot be considered to constitute unpredictable or exceptional circumstances within the meaning of the above mentioned provisions. Nor was there any good reason for considering that the case was exceptional, in view of the general requirement of handling requests for extension of time limits beyond six months, because there were no sufficient reasons to do so. The appellant has explained the excessive work load of the representative by pointing out that an attorney who had dealt with its cases until then had left the association of its representative in May 2007. However, as this situation had already lasted for more than two years when the request for extension was filed, on July 23, 2009, the ED correctly expected the representative to have taken the necessary measures to reduce the work load to such an extent that it was possible to definitely keep – generous – time limits. However, there was no submission regarding this aspect.

[2.7] it was not possible to reimburse the appeal fee. Neither the submissions of the appellant nor the other elements of the file have allowed the Board to spot any legal error of the ED in the way it exercised its discretion. Consequently, the impugned decision was correct.

[3] Contrary to the – unreasoned – suggestion of the appellant, there was no need to refer the case to the Enlarged Board of Appeal in application of A 112(1). Pursuant to A 112(1) a Board of appeal may refer [a question] in order to ensure uniform application of the law, or if a point of law of fundamental importance arises. The Board is of the opinion that none of these requirements is fulfilled. […]

The appeal is dismissed.

Should you wish to download the whole decision (in German), just click here.

The file wrapper can be found here.

T 1260/08 – Prima Facie Is Enough

Each of the two opponents filed an appeal against the decision of the Opposition Division (OD) to maintain the opposed patent in amended form.

On October 17, 2011, the Board summoned the parties to oral proceedings (OPS) to be held on December 20, 2011.

In a letter dated November 18, 2011, opponent 2 raised new grounds of revocation against the patent as maintained by the OD.

The Board would not admit those grounds into the proceedings, for the following reasons:

*** Translation of the French original ***

[2] In its letter of November 18, 2011, opponent 2 argues that the subject-matter of claim 1 as maintained extends beyond the content of the application as filed, and thereby violates A 100(c) EPC 1973. Even if the objection refers to the amendment of claim 1 carried out in the course of the opposition phase, which means that the case law of the Boards of appeal does not prohibit that such an objection be taken into account (see e.g. T 227/88 [3]; T 922/94 [2.2]), the Board nevertheless considers that this objection could most certainly have been filed at an earlier stage of the proceedings. As a matter of fact, as emphasized by the [patent proprietor], not only had this aspect not been mentioned during the opposition phase, but it had not even been raised by [opponent 2] in its statement of grounds of appeal.

Article 12(2) RPBA, however, stipulates that

“The statement of grounds of appeal and the reply shall contain a party’s complete case. They shall set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed, amended or upheld, and should specify expressly all the facts, arguments and evidence relied on. …”

Therefore, the Board, exercising the discretionary power conferred to it pursuant to article 13 RPBA, and taking into account the fact that the admission of the new ground raised by [opponent 2] would run contrary to the principle of procedural economy to which this article refers, concludes that this ground is inadmissible.

It is true, indeed, as pointed out by [opponent 2] in the course of the OPs, that the Board has the duty to examine of its own motion whether the amendments of a patent in the course of opposition or opposition appeal proceedings comply with the requirements of the EPC. In the course of inter partes proceedings, however, this duty, which is a consequence of A 114(1), is limited to a prima facie examination of the amended documents, i.e. a sort of pre-examination that will lead to a genuine (véritable) examination of the amendments only if the [pre-examination] suggests that these amendments are indeed such that they create a presumption of non-conformity with the requirements defined by the EPC (see T 263/05 [7.15]).

In the present case, the additional feature concerning the bending of the first branch, which has been introduced by the [patent proprietor] during the opposition proceedings, exactly corresponds to a passage found in column 4, lines 52 to 57 of the application as published. The question of whether it is indeed possible to “detach” this effect of the structural feature of fitting (encastrement) of the free end 46 of the first branch 40 – which are indeed associated in the cited passage – belongs to a more substantive examination which clearly exceeds the limits of the prima facie examination that is required under the present circumstances. As a matter of fact, the question raised requires [the Board] to determine to which extent the skilled person would indeed have considered that the proposed geometry was the only one that could be envisaged or whether, to the contrary, he would have understood without further ado that a great number of alternatives were equally suitable.

Finally, the conclusion according to which the introduced feature indeed satisfies, at first sight, the requirements of the EPC, and in particular those of A 123(2), is supported by the fact that neither the OD nor the [opponents] had considered the proposed wording to be problematic when it was introduced. In this respect, the statement of [opponent 2] according to which it had only realized at a very late stage of the appeal proceedings that there was problem related to a possible generalisation of the subject-matter of the application, confirms the non-immediate nature of the objection raised.

The Board concludes that the late filed ground is inadmissible.

The Board finally dismissed the appeals.

To read the whole decision (in French), click here.

The file wrapper can be found here.

T 532/08 – Admittedly

Disclaimers inserted during examining proceedings also create presumptions concerning the exclaimed subject-matter, as the appellant in the present case had to find out.

The patent proprietor appealed against the decision of the Opposition Division to revoke the patent under consideration.

Claim 1 of the main request before the Board read (in English translation; the differences with respect to claim 1 as granted are emphasized):

Crop protection composition, formulated as powder, granules or as a liquid, aqueous suspension, of active compounds having foliar or systemic action, characterized in that it comprises,

in the case of herbicide preparations, at least one herbicide from the groups of the urea derivatives or sulphonylureas, the carbamates, biscarbamates, diphenyl ethers, pyridolylacetic acid derivatives, pyridazines, triazines, triazinones, uracils, benzofuran derivatives, glyphosate or glufosinate,

in the case of fungicide preparations, at least one fungicide from the group of the morpholines, azoles, phthalimides or piperidines,

in the case of insecticide preparations, at least one insecticide from the group of the pyrethroids, carbamates or organophosphates,

or possible salts or esters of the abovementioned groups of active compounds,

at least one inorganic adsorbent and at least one surfactant from the group of the ethoxylated C6- to C20- alcohols, preferably C8- to C16-alcohols, the ethoxylated castor oils or the alkyl ether sulphates, wherein the sum of the proportions of adsorbent(s) and surfactant(s) is from 5.5 to 45.0% by weight, preferably from 15.0 to 25.0% by weight, and wherein the proportion of active compounds is from 5.0 to 75% by weight

the combination of metamitron technical (I), ethofumesatetechnical (II), phenmedipham technical (Ill), alcylaryl sulfonate (IV), polyoxyethylene-(6)-tridecyl ether (V), highly disperse pricipitated silicic acid (VI) and kaoline W (VII) in the composition:

and the combination of 33,93% by weight of propachlor (94%), 11,31% by weight of atrazine (95%), 4,00% by weight of Hi-Sil 2338, 1,00% by weight of kaoline, 2,80% by weight of Pluronic 1058, 1,00% by weight of lgepon T778, 1,00% by weight of CaCI2 x 2 H20, 8,00% by weight of ethylene glycol, 0,10% by weight of Corak 1008 and 36,86% by weight of water being excluded.

The Board found the underlying amendments to violate A 123(3):

*** Translation of the German original ***

[3.1] The [opponent] criticized the introduction of the feature related to the proportion of active compound in % by weight because the amendment was not occasioned by a ground for opposition under A 100.

[3.2] The Board does not share this opinion and considers this amendment to be an attempt to delimit [the subject-matter] with respect to the prior art and, therefore, to overcome the novelty objections that have been raised, in particular by the [opponent]. Because of the outcome of the present proceedings, however, this point does not need to be discussed in more detail.

[3.3] Claim 1 of the impugned patent, which is directed at a crop protection composition, formulated as powder, granules or as a liquid, aqueous suspension, contains two disclaimers.

The first disclaimer refers to the exclusion of combinations of components (I) to (VII) the composition of which is given in the form of a table, wherein the sum of the individual components adds up to 100%. None of the components (I) to (VII) is water.

The second disclaimer refers to a combination of combination of 33,93% by weight of propachlor (94%), 11,31% by weight of atrazine (95%), 4,00% by weight of Hi-Sil 2338, 1,00% by weight of kaoline, 2,80% by weight of Pluronic 1058, 1,00% by weight of lgepon T778, 1,00% by weight of CaCI2 x 2 H20, 8,00% by weight of ethylene glycol, 0,10% by weight of Corak 1008 and 36,86% by weight of water.

[3.4] In claim 1 as amended, which is only directed at liquid, aqueous suspensions, both disclaimers were deleted.

As far as the first disclaimer was concerned, the parties did not agree on whether this disclaimer only concerned solid formulations or whether, as was submitted by the [opponent], it also comprised liquid, aqueous suspensions. In this context, the Board agrees with the [patent proprietor] that the first disclaimer, wherein water is absent, is directed at solid formulations and not at liquid, aqueous formulations. In view of the negative outcome of the decision, however, the Board sees no need to discuss this point in more detail.

[3.5] The [patent proprietor] has not contested that the second disclaimer is directed at a liquid, aqueous suspension. This suspension undisputedly contains an active compound and adsorbents according to the claim (anspruchsgemäß) in addition to CaCl2 and ethylene glycol. It does not explicitly mention surfactants according to the claim, but the liquid, aqueous suspension further contains components referred to by the trade names Pluronic 105®, Igepon T77® und Corak 100®. It is only possible to omit this disclaimer without extending the scope of protection if there is no doubt that the components referred to by these trade names do not comprise any of the claimed surfactants.

[3.6] The [patent proprietor] pointed out that the suspension excluded by means of the disclaimer did not contain surfactants according to the claim and that, moreover, the feature concerning the sum of proportions of adsorbents/surfactants was not fulfilled. The disclaimer mentioned Pluronic 105® und Igepon T77® as surfactants, i.e. a block polymer of propylene oxide and ethylene oxide, and sodium-N-methyl-N-oleoyl taurate, respectively. Corak 100® was an anti-foaming agent based on silicone and was, therefore, not suitable as a surfactant according to the claim. Moreover, the [patent proprietor] explained that the [opponent] had not provided any proof for the assertion that the two compounds mentioned in the disclaimer and referred to by the trade names were surfactants according to the claim.

[3.7] It has to be observed that as far as the surfactants according to the claim are concerned, claim 1 of the main request is the same as claim 1 of the impugned patent but also of the application as filed. As a given composition has been excluded by means of a disclaimer in the course of the grant proceedings, one has to assume – as the opponent has done – that the aqueous suspension that has been excluded by means of the disclaimer comprises surfactants according to the claim and that the feature of the sum of proportions of adsorbents/surfactants is fulfilled. If the [patent proprietor] now claims that this is not the case, and that this also held true for the claim as granted, then the [patent proprietor] bears the burden of proof for this assertion.

[3.8] However, the [patent proprietor] has not submitted any evidence establishing, with the required certainty, that the suspension excluded in the impugned patent does not comprise surfactants according to the claim or that the feature concerning the sum of proportions of adsorbents/surfactants is not fulfilled, respectively. Moreover, it has to be noted in this context that it cannot be excluded that products characterised by trade names or their composition change in the course of time but keep the same name. Therefore, it cannot be clearly defined what is excluded by a disclaimer referring to trade names.

[3.9] For the above reasons, it cannot be excluded with sufficient certainty that the liquid, aqueous suspension of the second disclaimer contains surfactants according to the claim and fulfils the feature concerning the sum of proportions of adsorbents/surfactants. The Board comes to the conclusion that the amendment in claim 1 of the main request extends the scope of protection and, therefore, violates A 123(3).

Incidentally, this is another reminder (see also another recent post) that disclaiming products identified by their trade names is a very dangerous enterprise.

Should you wish to download the whole decision (in German), just click here.

The file wrapper can be found here.

T 191/08 – Don’t Trust Titles

The patent proprietor filed an appeal against the decision of the Opposition Division (OD) to maintain the patent in amended form.

Claim 1 of the main request before the Board (identical to claim 1 as granted) read:

Method for the immunochemical quantification of inactivated immunoreactive haemagglutinin molecule complexes of influenza viruses, which method comprises the following steps:

a) a sample which contains one or more haemagglutinin molecule complexes to be determined, which complexes have been formed by inactivation with formaldehyde, is incubated with a protein-binding solid phase, with haemagglutinin molecule complex being absorbed physically to this solid phase and not being bound by immunochemical reaction,

b) the liquid and the solid phases are separated,

c) the adsorbed haemagglutinin molecule complex is incubated with one or more specific antibodies which, directly or indirectly, carry a label.

d) the quantity of the label bound to the haemagglutinin molecule complex is determined, and

e) the quantity of the immunoreactive haemagglutinin molecule complex is determined from the quantity of the bound label by comparison with one or more standard values.

Claim 1 of the auxiliary request read (in English translation ; amendments with respect to the main request are underlined):

Method for the immunochemical quantification of inactivated immunoreactive haemagglutinin molecule complexes of influenza viruses, which method comprises the following steps:

a) a sample which contains one or more haemagglutinin molecule complexes to be determined, which complexes have been formed during the cleavage of the viruses by lipid-solubilizing agents and inactivation with formaldehyde, is incubated with a protein-binding solid phase, with haemagglutinin molecule complex being absorbed physically to this solid phase and not being bound by immunochemical reaction,

b) the liquid and the solid phases are separated,

c) the adsorbed haemagglutinin molecule complex is incubated with one or more specific antibodies which, directly or indirectly, carry a label.

d) the quantity of the label bound to the haemagglutinin molecule complex is determined, and

e) the quantity of the immunoreactive haemagglutinin molecule complex is determined from the quantity of the bound label by comparison with one or more standard values.

*** Translation of the German original ***

Main request – A 100(c)

[1] Claim 1 of the patent as granted is derived from claim 1 of the application as filed, which was amended as follows during the examining proceedings:

• Claim 1 of the patent application concerns a method for the immunochemical quantification of “inactivated immunoreactive antigens”, whereas the method according to claim 1 of the patent as granted is directed at the quantification of “inactivated immunoreactive haemagglutinin molecule complexes of influenza viruses”.

• In method step (a) three additional features characterising the haemagglutinin molecule complexes have been added, i.e. that the complexes (i) have been formed by inactivation with formaldehyde, (ii) physically adsorb to the solid phase and (iii) are not bound by immunochemical reaction.

[2] During the examining proceedings the applicant cited the passage extending from page 2, line 4, to page 3, line 4, of the application as filed as support for the first amendment […]. The “formaldehyde” feature and the feature related to “physical and not immunochemical adsorption” were said to be based on the second paragraph of page 2 and the third paragraph of page 5 of the application, respectively […].

[3] During the opposition proceedings, the opponent has invoked the ground of opposition pursuant to A 100(c) EPC 1973 […] against the feature “haemagglutinin molecule complexes […], which […] have been formed by inactivation with formaldehyde”.

[4] In its impugned interlocutory decision the OD has established that the first sentence of pargraph 3 of page 2 of the application was the only place in the application as filed where an inactivation of haemagglutinin molecule complexes of influenza viruses with formaldehyde is mentioned. The [patent proprietor] has not contested this [finding]. The passage to which the OD referred reads:

The corresponding passage taken from the Canadian counterpart to the EP application.

[5] The OD was of the opinion that this passage did not unambiguously disclose a method for the immunochemical quantification immunoreactive haemagglutinin molecule complexes of influenza viruses that have been inactivated with formaldehyde – without preceding lipid solubilisation.

[6] The Board of appeal shares this opinion. According to the Board, the feature “inactivation with formaldehyde” is not isolated in the cited passage of the application […] but is clearly put in the context of “cleavage of the viruses by lipid-solubilizing agents”. In contrast, the subsequent indications contained in the passage, which refer to document D8, belong to the exposition of the prior art; the skilled person reading the application would understand them within this context.

[7] The Board is not persuaded by the argument of the [patent proprietor] according to which the skilled person would realize that the cleavage of viruses by lipid-solubilizing agents was not essential for the invention. The skilled person would not interpret the omission of this step in the title of document D8, which obviously is an abridged statement of the contents of this document, that this feature characterising the haemagglutinin molecule complexes was not essential. The technical considerations invoked by the [patent proprietor] do not support its argument either. It is not relevant in the present case whether there are influenza vaccines where the viruses are not cleaved with lipid-solubilizing agents because the disclosure of page 2 of the application clearly refers to influenza vaccines where the viruses are treated with lipid-solubilizing agents before they are inactivated with formaldehyde.

[8] For these reasons, the Board of appeal cannot discern any clear, direct and unambiguous disclosure in the application as filed which could serve as a basis for claim 1 as granted. Therefore, the ground of opposition pursuant to A 100(c) makes it impossible to maintain the patent as granted.

Auxiliary request – A 123(2)

[9] Claim 1 of auxiliary request 1 differs from claim 1 of the main request in that the haemagglutinin molecule complexes have been formed by cleavage of the viruses by lipid-solubilizing agents and inactivation with formaldehyde.

[10] The Board, very much like the OD, cannot see any basis in the application as filed for an arbitrary sequence (beliebige Reihenfolge) of the steps “lipid solubilisation” and “formaldehyde treatment”. In the application as filed, these two steps are carried out in a given order, i.e. first the cleavage of the viruses by lipid-solubilizing agents and subsequently the inactivation with formaldehyde.

[11] Therefore, the Board is of the opinion that the amendment in claim 1 of auxiliary request 1 is in conflict with A 123(2). […]

The appeal is dismissed.

Should you wish to download the whole decision (in German), just click here.

The file wrapper can be found here.