Friday, 18 December 2009

T 725/05 – Res Judicata Is A Narrow Thing

Good things come in threes. After having considered what T 725/05 has to say on obiter dicta (see my earlier post) and on undue extension (see my preceding post), let me come back on this decision one last time. 

The patent proprietor pointed out that the decision the Board was about to take would be contradictory to decision T 500/01, which concerned the parent application of the divisional application which resulted in the patent that is the object of the present decision.
 […] In consideration of what has been said above, the Board reaches the decision that the application as originally filed refers to CDRs which are defined according to Kabat, or according to the alternate definition of Chotia. Since the Parent Application as originally filed does not refer to CDRs according to Chotia, the divisional application contains subject-matter going beyond the content of the earlier application as filed and does not meet the requirements of A 76(1). [25]

The [patentee] has argued that this decision would contradict decision T 500/01, taken by this Board in a different composition and referring to the patent granted on the basis of the parent application. He has put forward that the Board in decision T 500/01 has already performed an extensive analysis of the amendments to the description identical to [those] of the present divisional application as filed. The [patentee] stresses that the Board, in decision T 500/01 came to the conclusion that these passages did not provide support or basis for a definition of CDRs which is both Kabat and Chotia. [26]

It has to be emphasised that the patent that was the subject of the Board’s decision in case T 500/01 contained an explicit statement that the term CDRs was as defined by Kabat together with Chotia, both in the description and in claim 1. Whereas the situation underlying the present divisional application differs therefrom in so far as no such explicit definition of CDRs Kabat together with Chotia is present. However it is stated on page 4, starting in line 19, that Chotia provided an alternate definition of CDRs, which [means] according to this decision, that CDRs are either Kabat CDRs or Chotia CDRs. This passage, which was identically contained in the Parent Application as granted was indeed examined by the Board in decision T 500/01 and it was decided, as correctly stated by the [patentee], that it did not provide support or basis for a “combination” definition of CDRs, Kabat together with Chotia.

The issue before the Board in case T 500/01 was whether the expression “Kabat together with Chotia” had a basis in the parent application as filed.

The issue before the Board in the present case is whether page 4, line 9 to page 5, line 7 of the present divisional application as filed provides support for an alternate definition of CDRs, that is for Kabat or Chotia, and, if the answer is yes, whether this has a basis in the parent application as filed. Deciding in the present case that the definition of CDRs in the divisional application is Kabat or Chotia is not, therefore, contradictory to decision T 500/01.

For the same reason the Board’s present decision is not contradictory to T 500/01 [20-23], where it was decided that a claim restricted to a method of producing a humanized immunoglobulin light chain met the requirements of A 123(2). As all three “Chotia CDRs" of the light chain are subsets of the respective Kabat CDRs, for this embodiment the term "Kabat together with Chotia" was identical to Kabat CDR as disclosed in the parent application as originally filed. Therefore the Board did not see a violation of A 123(2) EPC.

This is a different situation compared to the present case where the Board has decided that the term CDRs as defined by Kabat or Chotia adds subject-matter in the divisional application compared with the parent application as filed which is contrary to A 76(1). [27]

To read the whole decision, click here.


EQE Tools said...

There has been a decision earlier this year dealing with the principle of res iudicata and divisionals. As I understood this principle normally applies to the same case (i.e patent or patent application). As a divisional is basically another case one would expect that the principle or res iudicata does not apply to divisionals.

In T0051/08 the board however reasoned:
Subject matter on which a final decision has been taken by a board of appeal in the parent application becomes res iudicata and cannot be pursued in the divisional application.

Although the situation is a bit different, T0725/05 appears to be in line with T0051/08 and indeed "[the same] subject matter" is interpreted narrow....which in itself is not a surprise.

Armand Grinstajn said...

To be honest, the term 'res judicata' does not even appear in this decision. It is my addition, and perhaps open to criticism. But we are pretty close to a situation where the same parties are before the same 'court' and discuss the same legal problem.

I also agree that it is not a great surprise that, at the end of the day, 'A+B' is considered different from 'A or B'. But as you will have noted, the decisions which I comment on here are rarely revolutionary. One of the goals of this blog is to help people stay in touch with the actual interpretation of the EPC, by means of some daily gymnastics. I try to find interesting exercises, but sometimes high-profile sportsmen may find them dull.

As far as T 51/08 is concerned, I plan to comment on it in the near future. So, ... shush ! ;-)

EQE Tools said...

"One of the goals of this blog is to help people stay in touch with the actual interpretation of the EPC, by means of some daily gymnastics."

Works for me, please keep going !