Saturday, 14 November 2009

W 28/07 – Eugene, Unity And All That Jazz

I understand that under the EPC 2000, protests against invitations (made by the EPO acting as ISA) to pay additional search fees for PCT applications are not dealt with by the Boards of appeal anymore. Therefore, I would expect 'W' decisions to disappear. It may well be that the present decision is one of the last of a dying species.

The present decision deals with an objection of lack of unity against a Markush claim (named after the inventor of such claims, Eugene A. Markush, a manufacturing chemist and dyestuff industry pioneer).

[…] The EPO, acting as ISA, invited the applicant pursuant to Article 17(3)(a) and Rule 40.1 PCT to pay 13 additional search fees. [II]

The applicant paid two additional search fees under protest pursuant to Rule 40.2(c) PCT and requested that an additional search be carried out for the group of inventions 3 and 4. [V]

The review panel of the ISA came to the conclusion that the invitation to pay additional fees was justified. [VI]

[…] The ISA’s invitation to pay additional fees is based on the finding that there is lack of unity a posteriori. It was held that there was no single general inventive concept in the light of the disclosure of several documents, including D4 and D6. [6]

[…] By arguing that there is no new technical effect linking the different groups of inventions and that the compounds neither share a significant structural element nor belong to a same recognised class of chemical compounds, the ISA referred to the “Markush Practice” as described in paragraph (f) of Annex B of the Administrative Instructions under the PCT, which are binding as regards the assessment of unity for the ISA as well as for the board.

Annex B, paragraph (f) specifies certain criteria for assessing unity of Markush claims, and in particular that for alternatives contained in such claims the requirement of a technical interrelationship and the same or corresponding special technical features as defined in Rule 13.2 of the regulations under the PCT is considered to be met when the alternatives are of a similar nature.

Alternatives are to be regarded as “of a similar nature” where the following criteria are fulfilled:

(A) all alternatives have a common property or activity, and

(B)(1) a common structure is present, i.e. a significant structural element is shared by all of the alternatives, or

(B)(2) in cases where the common structure cannot be the unifying criteria, all alternatives belong to a recognised class of chemical compounds in the art to which the invention pertains.

A “recognised class of chemical compounds” under (B)(2) above means that there is an expectation from the knowledge in the art that members of the class will behave in the same way in the context of the claimed invention. In other words, each member could be substituted one for the other, with the expectation that the same intended result would be achieved (Annex B, paragraph (f)(iii)). [7]

As regards the groups of inventions 3 and 4, there exists a common property or activity in the form of the antimicrobial and antitumor activities of the compounds comprised therein, so that the requirements of point (A) above are met. Moreover, there are common structural elements as required in point (B)(1) above, which can be defined as follows: n = 0, R5 = C8-C30-alkyl and p = 1-6. In addition, the compounds comprise a quaternary nitrogen. [7.1]

However, the fact that all claimed alternatives of the groups of inventions 3 and 4 belong to a group or a class of compounds which has a common structure and a common property or activity, can be regarded as a contribution over the prior art (see Rule 13.2 PCT) only if members of the group have not previously been used in the manner disclosed in the application under appeal.

This is not the case in view of for instance documents D4 and D6. As a consequence, these common structural and functional elements do not make a contribution over the prior art and can therefore not be considered as “special technical features”.

Therefore, there is lack of unity between the groups of inventions 3 and 4. [7.2]

To read the whole decision, click here.