Wednesday, 5 May 2010

T 1437/07 – Amendments Based On Disclosed Speculation

[5] Furthermore, the [opponents] rely on decisions T 158/96, T 715/03 and T 630/04 and put forward the following argument: In the three above-cited decisions the boards have ruled that “speculative” or “hypothetical” disclosures do not anticipate claimed subject-matter. Therefore, in analogy to the rationale of these decisions, Example 9 of the patent cannot be used as a basis for an amendment because it is “speculative” or “hypothetical” as well, since it has not actually been carried out.

[5.1] In decisions T 158/96 [3.6-3.6.2] and T 715/03 [2.2] the boards regarded it as “speculative” to infer from the information that a medicament is undergoing clinical phase evaluation that a particular therapeutic effect has been achieved. In T 630/04 [2.2.1-2.3] a statement in a document was denoted as a “hypothetical speculation” in the sense that it could not be interpreted as disclosing the claimed subject-matter. Thus, in the three cited decisions the teaching in a document was considered as “speculative” or “hypothetical” because it was not clearly and unambiguously derivable from the document. Hence, in contrast to what is implied by the [opponents’] argument, the boards’ reason for accepting novelty in the cited decisions was not that the subject-matter in the prior art documents was not disclosed in an enabling manner. Consequently, decisions T 158/96, T 715/03 and T 630/04 do not help the [opponents’] case.

[5.2] With regard to the [opponent’s] view that a “hypothetical” example cannot be used as the basis for an amendment, the board considers that the question of whether or not the disclosure in an application is sufficient to enable a skilled person to carry out the claimed invention is not relevant for the assessment of whether or not the requirements of A 123(2) are fulfilled. This is so, because the basis for amendments is the “content” of the application, i.e. what the skilled person would have clearly and unambiguously derived from the written disclosure as a whole. For the determination of the mere information content of a document it is not relevant whether or not what is disclosed has in fact been carried out.

To read the whole decision, click here.


Anonymous said...

I think the equivalent argument for A. 87(1) would have worked: if the priority document discloses the "same" subject-matter as the claim (in the sense of A. 123(2)), the priority is still invalid if the priority document does not sufficiently disclose that subject-matter. See the Case Law book, p. 301 and 302.

Btw, there is a space too many in the url to the decision.

Oliver G. Randl said...

Thanks for pointing out the deficient link. These blanks keep creeping in.