Wednesday, 2 June 2010

T 867/05 – You Must Be Kidneying

The patent as granted contained independent claims directed to a membrane material (for use in dialysis) and a method of producing such a membrane. During the opposition proceedings, the patent proprietor filed requests concerning an artificial kidney using such a membrane, but the Opposition Division rejected these requests as violating A 123(3) and maintained the patent on the basis of a claim directed to a membrane. 

The Board reconsiders whether the “artificial kidney” claim complies with A 123(3):

[5.1] The opponents have also objected that the amendment “artificial kidney” extends the protection conferred by the patent as granted.

[5.2] According to the proprietors’ arguments, an artificial kidney contains not only a membrane suitable for haemodialysis but also more components such as tubing, fittings and controls, which fact is no longer disputed by the opponents.

[5.3] Hence, the amendment “artificial kidney” implicitly imports in Claim 1 as granted not only more specific properties of the membrane, which actually would restrict the scope of protection of Claim 1 as granted, but also operative components of an apparatus, which were not defined in any of the claims as granted and which (as the casing, the tubing, the valves, etc.) have no interrelationship with the membrane, i.e. are not suitable to impart any limitation to the membranes.

[5.4] Since the product claims as granted defined a composition of matter (membrane material of Claims 1 to 9 and permselective material for use in dialysis of Claim 12), and since the amended product claims define an apparatus (an artificial kidney), there has been a shift of the definition of the invention from a physical entity to a more complex physical entity which was not encompassed by the terms of the claims as granted. That shift implies that further components of an apparatus are encompassed by the terms of the present claims. This extends the protection conferred by Claim 1 as granted to subject-matter which is foreign to that as granted (aliud), and so violates A 123(3).

The decision has a slightly American flavour (“composition of matter”); it would have been perfect statutory language to call the kidney a “machine” rather than an “apparatus”.

More seriously, I am somewhat surprised by the reasoning. The claim as granted covered a specific membrane and would have allowed the proprietor to prohibit any exploitation whatsoever of this membrane, for example in an artificial kidney. How could a claim to such an artificial kidney comprising the membrane be said to extend the protection conferred by the patent? I can’t believe that the Board got it right.

I may be wrong but I think that if the reasoning of the Board were correct, then it would NOT be possible, for instance, to accept an amendment from a claim to a physical entity per se ... to a claim to a physical activity involving the use of such physical entity” (to use the language of G 2/88 [5]). However, such an amendment has been explicitly allowed by the EBA.

It might be appropriate to recall what T 1149/97 [6.1.10] has called the “guiding principle under A 123(3)”: once a European patent has been granted, an act by a third party which would not infringe the patent as granted should not be able to become an infringing act as a result of amendment after grant. I believe that the amendment from a claim directed to a membrane to a claim directed to an artificial kidney comprising such a membrane does not go against this guiding principle.

What do you think?

To read the whole decision, please click here.


Anonymous said...

So now we finally have an extending limitation ;)

I also don't see how this (part of the) decision can be right. I think most Boards would actually consider the amended claim to be dependent on the granted claim (e.g. in the context of R. 43(2) EPC).

The Opposition Division did not consider this a violation of Art. 123(3) either. And pages 16-18 of the decision show that the proprietor's representative is not to be blamed.

I haven't fully studied it yet, but decision T 0352/04 by the same Board seems to be equally strange and a bt more reasoned (even though the proprietor argues that the situation there is different).

Anonymous said...

I fully agree with your post and the above comment. I can't see how adding more features can lead to an extension of scope (btw I'm the one who raised this question originally :-)).
We should however not forget that it was this board that gave us the wonderful A. 60 EPC decision on double patenting ...
It seems that Oliver was right in highlighting Ms. Kinkeldey's board as giving well and thoroughly reasoned decisions, while some other boards give some, lets call them "strange" decisions.

Oliver said...

I am happy to see that you share my view. But let's not let this get personal. "Shit happens", as they say, and even the best boards can make mistakes from time to time.

Javier said...

I think that a membrane is not a kidney. You are not just adding more additional feature, but you are claiming a new entity, and you may change the scope of the patent. For example, in the first case the patent cover all the processes and uses of a membrane, while in the second one the patent cover all the process to obtain a kidney (not a membrane) and all the uses of the kidney (not a membrane). Obviously that processes/uses are not the same. Also the change of the entity may be really relevant in case of equivalent infringement. I think this is a complicate case, and obviously the board decision is not well reasoned. By the way, thanks Oliver for your wonderful Blog.

Anonymous said...

But how can a use of the kidney comprising a membrane not be a use of that membrane? In the end, the kidney claim only protects that use because there's a kidney involved. If the kidney is involved, also the membrane is involved. So the granted claim, which covers the membrane, is infringed as well.

Similarly, any process to obtain the kidney will necessarily obtain the membrane (as part of the kidney). Once the kidney is involved, the membrane is involved.

Equivalent infringement of the kidney claim could indeed be an issue, but I think this is something for the national judge to watch out for. According to T 81/03:
"The general, abstract concern that the addition of a feature to a claim after grant leads to an extended scope of protection as the resulting combination of features might give rise to a different evaluation of equivalents in infringement proceedings is not in itself a sufficient reason for not allowing the addition of limiting features under Article 123(3) EPC (point 3.7 of the reasons)."

Javier said...

But the key issue is that we are not adding just a new feature, but are claiming a new entity, although it comprises the membrane it has so many additional features that is no longer a membrane. In other words, the patent did not claim a kidney and now is claiming a more specific kidney and the patent claims a membrane, which may be use in a kidney, but it is not a kidney, as far as I know. For me, this implies that the uses thereof may be different. For instance, the use of the membrane has not all the essential feature being implanted in a human and be and artificial kidney, therefore that use may not be within the scope of the patent. It would be something similar to the case of Monsanto with soy beans and soy flour.

Anonymous said...

You can't use the kidney without also using the membrane.

Since the claims are not use claims, I suppose you're thinking of G 2/88. The point of G 2/88 is that the scope of "use of product X" stays within the scope of "product X" for the reason that any use of X involves X. In the present case, any involvement of the kidney implies the involvement of the membrane. Any act protected by the kidney claim involves the kidney, hence involves the membrane, hence is protected by the membrane claim. (To be honest, I don't see the added value of looking at process and use claims. The artificial kidney comprises the membrane. The claim to the artificial kidney does not cover anything that is not also covered by the claim to the membrane.)

It would be different if the membrane claim claimed the membrane in isolation, but that's not the case.

"For instance, the use of the membrane has not all the essential feature being implanted in a human and be and artificial kidney, therefore that use may not be within the scope of the patent."
Here you're showing that you can't change the claim to the artificial kidney to a claim to the membrane without extending the scope. We all agree on that. The decision is on the amendment from a membrane to the artificial kidney, i.e. the other way around.