Tuesday, 4 May 2010

T 1437/07 – When A Title Entitles

[1] The issue is whether or not the skilled person would clearly and unambiguously derive the subject-matter of claim 1 from the disclosure in the parent application or the application as filed, in particular, from the heading of example 9.

[2] The description of the parent application and the application as filed are identical. Thus, Example 9 (i.e. the first of two examples each entitled “Example 9”) of both applications reads: “

“Example 9 The Use of Botulinum toxin Types A-G in the Treatment of Muscle Spasms and Control of Pain Associated with Muscle Spasms in Smooth Muscle Disorders Such as Gastrointestinal Muscles

[0061] A female, age 35, with spastic colitis, is treated with 1-100 units of Botulinum toxin divided into several areas, enema (1-5 units) delivered in the standard enema volume, titrate dose, starting with the lowest dose. Injection is to the rectum or lower colon or a low dose enema may be employed. Cramps and pain associated with spastic colon are relieved in 1-10 days.”

[3] The [opponents] argue that a heading could not provide a basis for a claim because the purpose of a heading is merely to structure a text and therefore it could not be considered as “disclosing” anything. It is submitted that the special character of a heading becomes evident when considering that the title of a patent could be amended by the EPO without informing the applicant or patent proprietor.

[3.1] However, the only titles that may be amended by the EPO are those printed on the cover sheet of a patent application (for the amendment procedures, see the Notice dated 13 March 1991 concerning the amendment of the title of the invention in European patent applications, OJ EPO 1991, 224; Guidelines, A-III, 7.2).

This “title of the invention” is also part of the abstract (R 47(1)). Both the abstract and the title of the invention serve for information and documentation purposes. In decision T 246/86 [2.2], the board found that the abstract does not form part of the disclosure for the purposes of A 123(2). Consequently, the title of the invention may not be used as a basis for any amendments of a claim as well.

[3.2] In contrast, amended claim 1 is based on a heading which is not on the cover sheet, but which is within the description of the application as filed. According to A 76(1) and A 123(2) the allowability of an amendment is judged on the “content” of the application. The term “content” relates to the parts of a EP application which determine the disclosure of the invention, namely the description, claims and drawings (Case Law of the Boards of Appeal, 5th edition 2006, III.A.1.1, first paragraph). Thus, headings that are situated within any of these parts form part of the disclosure content of an application and therefore amendments may be based on them.

[4] The [opponents] further maintain that, even if the heading of Example 9 was regarded as a “disclosure”, the skilled person would have considered it to be limited to the content of the specific disclosure which follows.

[4.1] However, the disclosure content of a document is to be determined on the basis of the document as a whole. In the present case, in the paragraph bridging pages 4 and 5 the invention is described in general terms: “The present invention provides a method for relieving pain, associated with muscle contractions, [...], and a method for treating smooth muscle disorders, including, but not limited to, spasms in the sphincter of ...”. On page 9, lines 18 to 19 it is stated that the invention “will now be illustrated by reference to the following nonlimiting examples”.

In the board’s view, these passages convey to the skilled person that the invention is not limited to the specific examples. This is also what the skilled person would derive from the Examples part of the description. Each of the twelve examples has a title disclosing in a "claim-like" manner a particular concept of use which is followed by a specific disclosure which illustrates it.

Not much to be said, except that this is the first time that I realize that the title of an application is part of its abstract. You never stop learning.

We shall come back on this decision tomorrow.

To read the whole decision, click here.


Anonymous said...

Interesting, but if the Board is of the view that a title that is printed at the top of the first page of the description is not part of the application as filed (but I'm not entirely sure what they mean by "cover sheet" of an application), I disagree. I do not see how the text printed on description pages is not part of the description.

I do agree that the text provided in the "title" field of the request for grant form is not part of the application as filed. In fact, this form may be filed AFTER the date of filing. Similarly, the abstract including its title cannot be used for amendments. But if the text of the abstract is replicated in the description, then there is no reason why amendments could not be based on that text.

Hmm, I suppose the Board is referring to (the title on) the cover sheet of the published application. Those are provided initially in the request for grant and may be corrected or amended by the EPO.