T 1553/07 – Enough Is Enough

The present decision deals with the admissibility of an opposition based on a prior public use – raised for the first time during appeal proceedings - and gives a useful overview of the relevant case law developed by the Boards of appeal on the substantiation of prior public uses, taking into account the offer that witnesses be heard.

NB: All legal provisions refer to the EPC 1973.

*** Translated from the German ***

[2] In its statement of grounds of appeal the [patent proprietor] pointed out for the first time that the opposition was inadmissible because it was not sufficiently substantiated. The EPO has to examine the admissibility of an opposition of its own motion, at any stage of the opposition and subsequent opposition appeal proceedings (T 289/91). This means that the Board has to examine the admissibility of the opposition in appeal proceedings even if the objection of inadmissibility is, as in the present case, raised during the appeal proceedings for the first time (see T 289/91 [2.1]).

[3] Whether an opposition is sufficiently substantiated is to be assessed by taking into account the content of the notice of opposition as well as further documents submitted during the time limit for filing an opposition, as the case may be, because it is not possible to correct deficiencies after expiration of this time limit (see also T 522/94). As a consequence, as far as the question of whether the [opponent] has complied with its duty to substantiate and whether its opposition may be considered admissible is concerned, only the legal and factual situation at the expiration of the time limit for filing an opposition is relevant (see T 1019/92). As the time limit for filing an opposition under A 99(1) had already expired on December 13, 2007, the moment of entry into force of the revised version of the EPC, the relevant provisions of the EPC 1973 are to be applied for answering the question of whether the opposition was sufficiently substantiated.

[4] According to the case law of the Boards of appeal the requirement of R 55 c) is fulfilled if the contents of the notice of opposition are sufficient for the opponent’s case to be properly understood on an objective basis, so that both the patent proprietor and the Opposition Division (OD) know what the case is about (see T 222/85 [4]). The facts submitted for substantiating the opposition have to be sufficient for the Board and the patent proprietor to be able to understand the submission without further investigations. (see T 222/85 and T 2/89). However, it is acceptable that they have to undertake a certain amount of interpretation (T 199/92 [1.2]).

Nor is it necessary that the facts and evidence submitted for justifying [the opposition] be so complete that a definitive examination is possible on this basis alone (see T 1069/96). Moreover, it is not required that the notice of opposition be valid (stichhaltig) (see T 222/85) or sound (in sich schlüssig) (see T 234/86).

[5] In the case of an alleged prior use, an opposition is deemed to be sufficiently substantiated if [the notice of opposition] indicates, within the opposition period, all the facts which make it possible to determine the date of prior use, what has been used, and the circumstances relating to the alleged use, as well as the evidence [presented in support of the grounds of opposition]. (see T 328/87). Thus the notice of opposition – possibly taking into account other documents filed within the time limit for filing an opposition - must indicate “what” was made available “when” and under what circumstances, in particular “to whom” (see T 522/94).

[6] The present opposition as presented in the notice of opposition is based exclusively on two prior uses concerning a spring brake actuator for industrial trucks (Flurförderzeuge).

[7] As far as the first public prior use (“prior use Lenze”) is concerned, the notice of opposition as a whole and the submissions under point 4.1 in particular contain the allegation that the company Lenze GmbH &Co. KG had supplied two-stage spring brake actuators bearing the reference 14.442.12.100 to the [opponent] since 1993, without there being any secrecy obligation. Thus, the notice of opposition already indicated when (since 1993) and under which circumstances (delivery of a product by one company to another without any secrecy obligation) the prior public use allegedly has taken place.

The [patent proprietor] has expressed doubts regarding the “prior use Lenze” by referring to the copyright note on drawing D10 and to the supply of “prototypes” according to the facsimile D8, because there was a customary, tacitly agreed secrecy obligation when companies joined in view of a common product development. Therefore, [the patent proprietor] was of the opinion that there was no indication in the submissions related to the opposition that [the product] had been made accessible to the public, so that the opposition was inadmissible. The Board cannot endorse this opinion. There was a concrete assertion in the notice of opposition that the delivery was made “without any obligation of secrecy”. Whether this assertion is correct - i.e. whether the alleged prior use was indeed made accessible to the public – is not relevant for the admissibility (see T 1022/99 [2.2]) Thus the objections of the [patent proprietor] are not relevant for the assessment of the admissibility of the opposition, but only, as the case may be, for the substantive assessment – that is to say, for the examination of the allowability of the opposition.

[8] As far as the object of the “prior use Lenze” is concerned, the submissions in the notice of opposition regarding the features of the delivered spring break actuator explicitly refer to the filed drawings (D6, D9, D10 and D12) and to the extracts from post-published manuals (D3 and D7). As a rule, the features of the claim under consideration have to be compared with the features of the object of the prior use and the technical relationships have to be pointed out (T 28/93 [4.1]). However, when the factual situation is simple, as in the present case, such indications may be omitted if they are directly understandable for the average skilled person (see T 1069/96 [2.3.3]) The technical features of the spring break actuator that is the object of the alleged prior use can be gathered from the submissions in the notice of opposition, and in particular construction drawing D6. In line with the indications of schematic diagram D12, a complete break, including the additional hydraulic activator, can be recognized in construction drawing D6. How the break functions can be seen from the schematic drawing D12 and the extracts from the post-published manuals D3 and D7. The Board is of the opinion that this discloses the technical features of the spring brake actuators that have been used and allows for a comparison with the features of claim 1 as granted, without requiring undue efforts. It is irrelevant whether the used object really had those features because the validity or soundness of the submissions related to the opposition is not relevant for the assessment of admissibility (see point [4] above). Whether the documents already filed or indicated (including the designation of a witness for a later hearing) provide evidence for the factual assertions of the opponent or not – for example, because they are contradictory – is a question related to the consideration of evidence, which has to be treated when assessing the allowability of an opposition. Therefore, the submissions of the opponent concerning the object of the alleged prior use are sufficiently substantiated, too.

D6 (click to enlarge)

[9] Together with the notice of opposition, the opponent has filed written evidence and offered witnesses as proof for the prior use Lenze which it alleges.

The Board agrees with the [patent proprietor] that a global offer of a witness hearing cannot replace deficient factual submissions. However, in the present case, the facts regarding the alleged prior use were substantiated within the time limit for filing an opposition (see points [7] and [8] above).

However, the Board cannot share the opinion of the [patent proprietor] that for an opposition to be admissible, it is necessary, not only to designate witnesses, but also to indicate what the designated witnesses are to declare. Pursuant to R 55 c), the notice of opposition only has to indicate the evidence. The evidence itself can be filed after the expiration of the time limit for filing an opposition, because R 55 c) does not provide that the indicated evidence has to be filed within the time limit for filing an opposition (see T 328/87).

Therefore, the designation of witnesses for a later hearing is to be considered to be a sufficient indication if evidence, provided that it is clear which factual assertions are concerned by the witness designation (für welche Tatsachenbehauptungen der Zeuge benannt wird). However, the Board does not consider an indication of the concrete allegation to be proved (Angabe eines konkreten Beweisthemas) to be necessary. It is not necessary to indicate what the witness can declare on the alleged facts, either.

In the present notice of opposition, the opponent offered evidence by means of witness hearings regarding the alleged prior use Lenze, which the Board believes to be sufficient for complying with the requirements of R 55 c). Moreover, this requirement is already complied with by the written submissions contained in the notice of opposition.

The argument of the [patent proprietor] according to which the witnesses offered for establishing the public nature [of the prior use] cannot be considered as evidence because the witnesses cannot report on the delivery based on their own experience, also addresses the question of whether the evidence is sufficient for acknowledging the existence of a prior public use. However, this is only to be assessed during the examination of the allowability of the opposition.

Thus at least the prior use Lenze, which has been pointed out in the notice of opposition within the 9-month time limit for filing an opposition under A 99(1), has been substantiated. The Board is convinced that the indications related to the facts and evidence justifying the grounds of opposition that have been raised are sufficient for complying with the requirements of R 55 c). Therefore, the opposition is admissible, be it only for the first alleged public prior use Lenze. As a consequence, the second alleged public prior use Jungheinrich is not decisive for the admissibility of the opposition any more.

I shall report on another aspect of this decision in a forthcoming post.

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To All The EQE Candidates …

… the best of luck!

May there be no need for further processing in 2012.

NB: I shall be very close to some of you, because I am invigilating in Taastrup this year.

Interpretational Spotlight: « Uploading »

[2.3] The appellant argued that “transmitting” data cannot always be equated with “uploading” data, since “uploading” requires that the transmitter initiates the data transmission.

In the board’s view, however, the term “uploading” should be given the meaning and scope it normally has in the relevant art, namely that of transferring data, etc., from one computer or device to another, especially to one which is larger or remote from the user, or is functioning as a server; it is not relevant which side initiated the transfer. Hence, by transmitting data from [a] portable audio device to [an] external device […], the data is uploaded. The argument is therefore not convincing.

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T 264/09 – Back To Search

More of a reminder, really.

[4.1] The board notes that the Examining Division (ED) did not admit a first auxiliary request for the reasons that claim 1 of that request differed from claim 1 of a main request by the addition of a feature which was not present in the claims as originally filed, had not been searched, and did not combine with the originally claimed invention to form a single inventive concept. Consequently, the claim was held not to meet the requirements of R 137(4) (as then in force).

The feature in question related to the portable handheld audio device of the system according to claim 1 as originally filed and further specified that it was adapted to transmit audio data from the portable handheld audio device to the external source.

[4.2] In the board’s view, if a feature which has not been searched and which further defines an element which was already part of a claim which had been searched, is taken from the description and added to this claim in order to overcome an objection under the EPC, e.g. lack of inventive step, this does not result in a claim which has been amended such that it relates to unsearched subject-matter which does not combine with the originally claimed invention to form a single general inventive concept.

The board thereby follows the well-established case law on the interpretation of R 86(4) EPC 1973 see, e.g., T 708/00 [17], T 274/03 [5,6] and T 141/04 [5], it being noted that R 86(4) EPC 1973 has the same wording as R 137(4) (as in force at the date the ED took its decision), which, as from 1 April 2010, is included in R 137(5).

The board notes that the Guidelines for Examination in the EPO (April 2010) are drafted accordingly, cf. section C-VI 5.2(ii) which explicitly mentions the possibility of carrying out an additional search in connection with the examination of amended claims.

[4.3] It follows that in respect of the then first auxiliary request referred to at point [4.1] above the ED was wrong in raising an objection under R 137(4).

[4.4] Turning to claim 1 of present auxiliary request III, this claim includes, inter alia, the additional features that the display means of the portable audio device is suitable for displaying a menu image and that the portable audio device includes means for selecting desired audio data from a menu image which indicates a plurality of pieces of audio data which are stored in the external source. The situation referred to at point [4.2] above applies to this claim in that it includes additional features which were not part of the claims as originally filed and which give rise to the question of whether or not an additional search as provided for in the Guidelines, B-II 4.2(i) and C-VI, 5.2(ii) and 8.2, is required in order to be able to examine the question of whether or not the claimed subject-matter meets the requirements of the EPC, in particular A 52(1) in combination with A 54 and A 56.

[4.5] Having regard to the considerations set out above at points [4.1] to [4.4], the board is of the view that, in the present case, the above-mentioned question of whether or not an additional search is required, is a matter to be considered by the ED.

[4.6] The board therefore judges that it be appropriate pursuant to A 111(1) to remit the case to the ED for further prosecution on the basis of the claims of auxiliary request III.

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T 891/07 – On The Sufficiency Of Humanoids

In the present decision the Board deals with the refusal of an application by the Examining Division (ED). The application was refused on the ground that the invention was not disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art (A 83). Additional comments were provided in the contested decision indicating that the ED was also of the view that the claims were not supported by the description (A 84).

Claim 1 on file before the Board read:

A system for gathering information from an environment, the system comprising :

- RFID tags to be provided on objects and transmitting information on the associated objects, and

- a humanoid robot provided with a computing device, the computing device comprising: visual sensing means for gathering visual information on objects in the environment, the environment being an area surrounding the computing device, wherein the computing device gathers said visual information and receives said information transmitted from said RFID tags of said objects located within said area, antenna means for wirelessly receiving said information from said RFID tags of said objects, means for combining the visual information as well as the wirelessly received RFID information for making a decision on objects identified by the visual information and the RFID information and for generating output signals based on said decision in order to drive a manipulator of the humanoid robot.

A 83 and A 84 (EPC 1973) - general remarks

[6.1] Both the requirement that the claims be supported by the description (A 84) and the requirement that the invention be sufficiently disclosed (A 83) are designed to reflect the principle that the terms of the claim should be commensurate with, or be justified by, the actual contribution to the art (T 409/91 [3.5]). It is the actual contribution to the art which defines the invention and for which protection may be sought.

[… T]he independent claims have been directed to the general concept of combining visual and RFID information. It is this concept which is currently considered to represent the contribution to the art.

[6.2] The Board supports the idea that an invention which opens up a whole new field is entitled to more generality in the claims than one which is concerned with advances in a known technology (Guidelines for Examination in the EPO, C-III, 6.2).

In view of the fact that multimodal integration was known at the priority date of the application (as can be seen from US-A1-2003/0149803, cited in the application), whether the present invention really opens up a whole new field may perhaps be questioned. Nevertheless, if the assessment of novelty and inventive step shows that the combination of visual and RFID information in a humanoid robotic context is new and inventive, then the Board considers that the appellant would be entitled to protection at this level of generality. This illustrates the interrelation that exists between A 84, A 83 and A 52(1) and highlights the risk that a broad claim will be more vulnerable to a novelty or inventive step objection.

A 83

[7.1] A 83 requires that the invention be disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. For an application to be refused on this ground, the skilled person, equipped only with the description, claims and drawings of the application, and his general knowledge, would have to be unable to produce a working version of the claimed system. It cannot be expected that the skilled person will have to resort to inventive ingenuity in order to fill any gaps in the teaching of the application.

[7.2] Before it can be considered whether the skilled person would be able to carry out the invention, it is first necessary to establish what qualifications and level of knowledge the skilled person holds.

The Board accepts the position of the appellant that the skilled person in this particular field will be very highly qualified. In particular in the field of humanoid robotics, the skilled person will typically come from a background of computer science, but will require expertise in the fields of mechanics, electronics, biomechanics, computer programming and humanoid signal processing. Consequently, the “skilled person” in this field will comprise a team of experts, this team being technically very highly skilled and having a vast range of technical literature at its disposal.

[7.3] The invention, as it is set out in the independent claims, concerns the use of two signals, one emanating from the visual sensing means and one emanating from the RFID transmitter. These two signals are combined for making a decision on objects identified by the two information sources. The invention does not lie in the details of the manner in which the signals are combined, but instead in the mere fact that they are combined.

[7.4] The ED considered that A 83 was not satisfied since the application did not provide sufficient information to enable the skilled person to perform the combination of visual and RFID information without undue burden. No information was provided as to how the combination was performed, how the decision was taken, nor indeed as to the nature of the decision. No explanation of the specific processing required for multimodal integration was contained in the application, so the skilled person would not know how to perform the necessary data fusion. Even when referring to the specific example provided on page 5 of the application, no details were provided as to how the information integration should be performed.

Clearly, processing the visual and the RFID signals to make a decision will involve a certain degree of programming skill and signal processing knowledge: this task is certainly not trivial. It is noted however that data fusion in a multi-sensory environment is presented in the description as being the starting point of the invention […]. The skilled person must therefore be considered to be conversant with such data fusion techniques. Moreover, the description refers to US-A1-2003/0149803 which concerns multimodal integration. The skilled person may therefore also be considered to be conversant with multimodal integration techniques. Thus it must be assumed that the skilled person having the level of knowledge set out above will know how to process the data received from the two different sources and be in a position to draw a conclusion based on the combined data. The Board observes that, at a very basic level, this data could, for example, simply be a change in contrast boundaries sensed by the visual sensing means and information sent by the RFID tag establishing the identity of the object. As pointed out by the appellant, the decision which is taken need not even be correct. The Board is therefore convinced that the skilled person in this field will have sufficient knowledge to provide a “means for combining the visual information as well as the wirelessly received information for making a decision on objects identified by the visual information and the RFID information” and for generating a corresponding output signal.

[7.5] Moreover, the ED noted that the application contained no guidance on how the vision system formulated the hypotheses mentioned on page 5 of the description, nor did it instruct on a general framework of formulating hypotheses which could be applied in the context of heterogeneous data fusion. The ED therefore concluded that the

“essential components of the invention, in particular those concerning object recognition during the process of data fusion are missing from the application as filed” […]

and that the skilled person would have to resort to inventive activity in order to integrate the visual and the RFID data.

The Board notes that the invention as claimed does not require that any hypotheses be determined. Indeed, as contemplated above, depending on the decision to be taken and on the data acquired from the two sources, the combination of the visual and RFID information may in fact be a very straightforward operation. The Board is therefore of the view that details of the hypotheses-forming procedure are not categorically required in order to carry out the invention. Notwithstanding this finding, the appellant submitted that the skilled person in this field would nonetheless know how to form hypotheses for viewed objects. The Board tends to agree with this opinion and notes that the hypothesis need not be of a complex nature. For example, motion information from the visual sensor may be sufficient for the vision system to supply a hypothesis suggesting the possible identity of the object being viewed.

[7.6] The ED maintained that “taking a decision” in claim 1 must involve a process of object recognition or identification […] and held that, since no information was provided as to how to perform object recognition, the invention is insufficiently disclosed. The Board sees no basis for interpreting the “decision” in this manner. As argued by the appellant, the decision is unspecified and depends entirely on what information is received from the two sources.

[7.7] The ED further objected to the fact that the application did not contain sufficient details to enable the invention to be carried out over the whole breadth claimed […], basing this objection on the problem of correct data association in the specific scenario in which two objects are present (but not necessarily distinguishable as two objects) in the visual scene and two RFID signals are received. This scenario was covered by claim 1 but no explanation was provided as to how to correctly associate the two RFID signals to the respective visually-sensed objects.

A 83 requires that the invention be disclosed in such manner as to allow it to be carried out. A 83 does not require that details should be provided to enable each and every construction covered by the claims to be implemented; indeed, this would be an impossible undertaking when the claims are drafted in functional terms. In the view of the Board, even if hypothetical, non-implementable constructions may be conceived, this does not prevent the general principle being claimed in its full breadth if the skilled person is not put in a position where he systematically has to resort to inventive ingenuity in order to carry out the invention.

The example given on page 5 of the description is a very specific illustration of one scenario in which the invention could be employed. The invention does not hinge on whether two visually-sensed objects may be distinguished from each other, but that visual and RFID information may be used to augment each other and to permit decisions to be taken with little effort […]. It is in this breadth that the invention has been set out in the description and it is in this breadth that it is now claimed. Whether the skilled person will know how to analyse each and every scene presented to the computing device and to derive specific information from that scene is not essential for assessing whether A 83 is satisfied. What is important is whether the skilled person will know how to carry out the invention, which in the present case resides merely in the combination of visual and RFID information.

In the Board’s view, the examination of A 83 should not be reduced to a quest for a single construction which cannot be implemented on the basis of the information provided in the application. A 83 concerns whether the invention has been sufficiently disclosed rather than whether scenarios exist for which a full explanation has not been provided.

[7.8] In the present case, the Board therefore considers A 83 to be fulfilled.

A 84

[8.1] The ED held that “the description fails to support to a sufficient extent” the means for combining the visual information with the RFID information, since the application contained no clear teaching on how to successfully implement the invention when two objects were viewed and information was received from two RFID tags. The Board has understood this objection to be a lack of support by the description (A 84) over the whole breadth claimed.

Indeed, the RFID information and the visual information were initially not defined in the claims as pertaining to the same object. There was no teaching in the description which suggested that information other than object-centred information may be combined with the visual information, the implication being that the two types of information must relate to one and the same object. No other combination had been envisaged and no justification appeared to exist for generalising this concept to allow for the combination of visual information with non-related RFID information.

During the appeal proceedings claim 1 was amended and now sets out, using the wording of the original description, that the decision is taken on objects identified by the visual information and the RFID information. The Board considers that this serves to clarify that both information sources are used in the identification of the objects. That the objects may be identified by the visual and the RFID information means that enough information must be provided by each information source to enable the correct association of the data such that object identification is possible. Consequently, the claims have been restricted to the combination of information pertaining to the same object and so are now supported by the description in this respect.

[8.2] The Board acknowledges that the claims are still very broad, relating to the general concept of combining visual information about an object with RFID information about that object. However, the Board does not consider that this generality goes beyond what is warranted by that which the appellant presents as being the contribution to the art and which is described in the application as the mere combination of the visual and the RFID signals. As will be clear from the remarks concerning A 83 above, the Board considers that the invention may currently be seen to lie at this level of generality.

In view of the fact that novelty and inventive step have not yet been considered - this being the subject of the examination still to be performed by the ED - any limitation at this stage of the proceedings to more specific embodiments would be unduly restrictive.

[8.3] Consequently the Board is of the opinion that the claims are supported by the description.

The Board then remitted the case to the ED.

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T 2149/08 – Come In

Should you want to refresh your knowledge on the admissibility of third party interventions, this decision might be of interest to you.

The relevant facts of the case are as follows:

• November 30, 2006 : lawsuit for ruling of non-infringement, filed by the intervening party (hereinafter referred to as “opponent OII”) at the Court in Milan, Italy, as established by document P5
• November 14, 2007 : invalidity action filed by the intervening party, as established by document P6
• November 23, 2007 : infringement action in Zaragoza, Spain
• February 22, 2008 : intervention

Obviously, one of the crucial questions is whether it is the infringement action that triggers the 3 month time limit under R 89(1) or whether the non-infringement lawsuit or the invalidity action do (in which the case the intervention is belated).

[1.1] The intervention by opponent OII was filed on 22 February 2008. This had annexed thereto an unsigned copy of an infringement suit dated 23 November 2007 together with an English translation thereof. This is not in dispute.

[1.2] The three-month time limit in R 89(1) for filing the notice of intervention is met, only if it is proven that proceedings had been instituted in accordance with A 105(1).

[1.2.1] The date of drafting of the infringement lawsuit in Zaragoza bearing a date of 23 November 2007 is at first sight the earliest date on which the lawsuit could possibly have been filed, unless the lawsuit had been post-dated. The subsequent filing of the intervention on 22 February 2008 and payment of the fee on the same day were thus within three months of, seemingly, the earliest possible date.

[1.2.2] It can be left undecided whether an unsigned copy and translation alone provide insufficient evidence for proving the date of institution of proceedings, or indeed whether proceedings were instituted at all. In the present case opponent OII later filed evidence to that effect on 18 April 2008, in the form of E1.

The [patent proprietor] also agreed that the earliest possible date of institution of proceedings was proven by E1.

[1.2.3] Since, according to R 89(2), R 76 and R 77 are also applicable to interventions, and since it is stated in R 77(2) that any deficiency which is not a deficiency under A 99(1) or R 76(2) can be remedied within a period specified, it follows that opponent OII indeed filed E1 in good time because no period under R 77(2) had yet been set by the EPO for doing so.

[1.2.4] Although E1 is in Spanish and was not filed with a translation into one of the official languages of the EPO, the [patent proprietor] had acknowledged that E1 was evidence showing that the lawsuit had been filed at the earliest on 23 November 2007. A translation was thus not required, although translations of E1 to E3 were indeed filed by way of opponent OII’s submission of 19 November 2010, in response to the Board’s mention of this in its communication sent prior to oral proceedings (OPs).

[1.3] The infringement action in Zaragoza bearing a date of 23 November 2007 was the first proceedings falling within the terms of A 105(1).

[1.3.1] A 105(1) states:

“Any third party may, in accordance with the Implementing Regulations, intervene in opposition proceedings after the opposition period has expired, if the third party proves that

(a) proceedings for infringement of the same patent have been instituted against him, or 

(b) following a request of the proprietor of the patent to cease alleged infringement, the third party has instituted proceedings for ruling that he is not infringing the patent.”

[1.3.2] Contrary to the [patent proprietor’s] submissions, none of the court actions according to P5 […], P6 […], nor the verification proceedings in Zaragoza (of which a copy was not anyway filed in the appeal procedure), is an action under A 105(1) which would have caused the three-month time limit for filing an intervention to end earlier.

[1.3.3] P5 […] is a lawsuit brought by opponent OII against the [patent proprietor], requesting inter alia nullification of the European patent […] and a declaration that the products of opponent OII […] did not infringe this patent. However, neither of these claims constitutes proceedings under A 105(1), because the law suit is not a proceedings for infringement instituted against opponent OII as in A 105(1)(a), nor is the lawsuit a proceedings instituted by opponent OII “following a request of the proprietor of the patent to cease alleged infringement” as in A 105(1)(b).

[1.3.4] Nowhere in P5 […] is there any statement indicating that the intervener had been requested to cease alleged infringement. On page 3, it is stated that

“It is likely...that (the [patent proprietor]) will undertake further judicial measures”.

Additionally on page 4, it is stated that

“in consideration of the assumed behaviour by (the [patent proprietor]) in Germany and France, the grounds subsist also to fear the now (the [patent proprietor’s]) suits in Italy on the aforementioned patent titles against (opponent OII)”.

However, none of these statements concerns a proceedings for infringement instituted against opponent OII, nor does any of these statements imply a request of the proprietor of the patent to cease alleged infringement in Italy. Instead, the statements merely indicate that the lawsuit of opponent OII was an attempt to pre-empt any action of the proprietor in which it might request the ceasing of alleged infringement.

[1.3.5] As regards the fact that a verification procedure in Zaragoza had been instituted earlier, which was not contested as such by opponent OII, the [patent proprietor] supplied no evidence which would indicate that these verification proceedings would constitute an “equivalent or even more than” a request to cease alleged infringement, as it had argued in its written submissions. This was also mentioned in the Board’s communication prior to OPs and no new evidence was supplied by the [patent proprietor] in response thereto.

[1.3.6] Instead, in its letter of 24 November 2010, the [patent proprietor] argued that the rationale of the “request” mentioned in A 105(1)(b) was to allow a party with a legitimate interest to enter the EPO proceedings and that this was so because in many countries a legitimate interest had to be shown before a lawsuit for a declaration of non-infringement could be filed. However, the [patent proprietor] has merely put this forward as an argument, without providing any evidence which would support its interpretation of the alleged intent of A 105(1)(b) when it was drafted. The Board thus sees no reason to alter its provisional opinion.

Further, the [patent proprietor’s] argument that a “request” need not be in writing and that it should merely be understood as a serious intent not to tolerate patent infringement which would result in the third party understanding that the proprietor would sue it for patent infringement, is also entirely unsupported by any evidence to that effect. Merely because a possibility, or even a likelihood, exists that a proprietor may sue a potential infringer, there is no evidence on file which would allow the Board to equate this to be a “request ... to cease alleged infringement.”

Also, the actions undertaken in other countries by the [patent proprietor] also against other companies in the same group as opponent OII do not constitute a request by the proprietor of the patent to cease alleged infringement.

[1.3.7] P6 […] relates to the lawsuit for nullity filed in Barcelona, but this however gives no indication that the [patent proprietor] had started an infringement proceedings against opponent OII according to A 105(1)(a), nor that the nullity suit is equivalent to a request for a non-infringement ruling and was made following a request of the proprietor to cease alleged infringement under A 105(1)(b). Again, the [patent proprietor] has provided no evidence which shows that a request to cease alleged infringement had been made.

[1.4] The [patent proprietor] argued further that opponent OII was not a “third party” in accordance with A 105(1). The Board however finds otherwise.

[1.4.1] P7 and P8 were supplied as evidence by the [patent proprietor] to demonstrate that because opponent OII belonged to the same group of companies as opponent OI, opponent OII should not be understood as independent, nor a “third party” in the terms of A 105(1).

[1.4.2] P7 indeed appears to show that opponents OI and OII are within the same group of companies, but provides no information which could lead to a finding that each is not a separate legal entity. The Board finds that the terminology “Any third party” in A 105(1) cannot be given an interpretation other than that each party must be a separate legal entity. This was also mentioned in the communication sent to the parties in preparation for OPs, and the [patent proprietor] did not then contest the fact that each party was a separate legal entity, nor did it provide evidence to the contrary.

[1.4.3] P8 also adds nothing to the aforegoing, since it merely shows that the company (Inventio AG) which forms the patent department was able to claim costs for one of the subsidiaries of the holding group. The presumption that opponents OI and OII may be licensees of the patent department company which may further indemnify opponents OI and OII in respect of actions against it by third parties holding intellectual property rights, does not serve to undermine the status of opponent OI and opponent OII as being separate legal entities.

[1.4.4] The [patent proprietor’s] allegation that allowing the opponent OII to intervene was an attempt to abuse the opposition procedure is not followed by the Board. The fact that opponent OII may intervene at all lies entirely within the sphere of responsibility of the [patent proprietor], by its choice to institute proceedings against opponent OII during opposition proceedings.

[1.5] The Board thus finds, based on the evidence and arguments provided by the parties, that the intervention during opposition proceedings was admissible.

Should you wish to download the whole decision, just click here.

To have a look at the file wrapper, click here.

For a similar decision (involving the same parties), click here.

Another interesting decision on third party interventions can be found here.

T 156/08 – Open Frame

When a patent application in the field of genetic engineering contains a claim referring to a nucleotide sequence and there are slight differences between the sequence of the application and the sequence of the priority document, is the priority claim invalid? Not necessarily - it depends on what, precisely, is being claimed.

The appeal was against the decision of the Examining Division (ED) to refuse the patent application under consideration, because it did not comply with A 123(2) and because the subject-matter was not novel.

When examining the requests before it, the Board came to the conclusion that the objections under A 123(2) did not apply any more. It then dealt with the novelty objection.

[5] With regard to the second auxiliary request the examining division decided that the subject-matter of its claims 1, 3 and 5 was not novel over the disclosure in document D2. The document was considered as prior art pursuant to A 54(2) because the claims could enjoy priority only from the fourth priority document. This was so because the nucleotide sequence of the BRCA2 gene referred to in the claims of the second auxiliary request, i.e. SEQ ID No. 1, was only identical to that disclosed in the fourth, but not to that disclosed in the third priority document.

[6] Present claim 1 of the main request relates to “[a] method for determining variation in the open reading frame (ORF) defined by SEQ ID No. 1 which comprises determining in a tissue sample of a subject a frameshift mutation in said ORF, wherein said mutation causes protein truncation ...”.

Present claim 3 of the main request relates to “[a] method for diagnosing a lesion in a human subject for neoplasia which comprises determining in a tissue sample from said lesion a frameshift mutation in the open reading frame (ORF) defined by SEQ ID No. 1 wherein said mutation causes protein truncation and is indicative of neoplasia ...”.

[7] Thus, in other words, the methods of claims 1 and 3 require determination of the open reading frame of the BRCA2 gene from the tissue sample and its comparison with the open reading frame “defined by SEQ ID No. 1” as the “reference” open reading frame.

Consequently, the “open reading frame defined by SEQ ID No. 1” and not “SEQ ID No. 1” is a feature of the claimed methods.

[8] Establishing a “reading frame” is a way of breaking a nucleotide sequence into portions of three nucleotides called triplets or codons. The “open reading frame” is the one that contains a start and a stop codon in the same frame. Also, it is the one supposed to be translated into a protein. Each three-nucleotide codon is translated into one amino acid.

[9] Hence, for determining any reading frame of a nucleotide sequence, including an “open reading frame”, knowing the actual sequence of nucleotides, i.e. the kind of nucleotide at a given position, is not necessary.

[10] The nucleotide sequence according to SEQ ID No. 1 as disclosed in the third priority document differs from that disclosed in the application in the kind of nucleotide at positions 2014, 4553, 4815, 5782-5789, 5841, 5972 and 8716. These alterations neither affect the length of the sequence to be translated nor the codon which “opens” the reading frame, i.e. the start codon. Therefore, despite the variations in the sequence, the open reading frame defined by SEQ ID No. 1 according to the third priority document and the application as filed remains the same.

Thus, the feature at issue here, i.e. the “open reading frame defined by SEQ ID No. 1” is disclosed in the third priority document.

[11] Consequently, in the board’s view, the non-identity of the nucleotide sequence disclosed in SEQ ID No. 1 according to the third priority document and the application as filed is not a reason for denying the third priority date for the subject-matter of the present claims 1 to 3 and accordingly is also not a reason for considering document D2 as prior art pursuant to A 54(2).

Therefore, the ED’s objections of lack of novelty and inventive step are not tenable.

[12] The finding in point 11 above, first half-sentence, is in line with the reasoning in two decisions issued after the decision under appeal was taken, i.e. decision T 80/05 [37] and T 666/05 [40].

Also in the cases underlying these decisions the claims related to diagnostic methods involving the determination of frameshift mutations, the “reference open reading frame” was defined in relation to a specific sequence and the issue of the entitlement to priority arose because in both cases only the fifth priority document disclosed a sequence exactly corresponding to that referred to in the claims.

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T 1171/06 – More On Models

This decision deals with an appeal against the decision of the Examining Division (ED) to refuse an application belonging to the modelling realm. 

Claims 1 and 3 of the main request before the Board read: 

1. Method for modelling a mechatronic system in a motor vehicle, wherein the mechatronic system is structured in a plurality of components between which there are pregiven communication relationships, such as inquiry, invitation and order; wherein a mapping requirement is provided by means of which said components and communication relationships of the system are converted into elements of an object-oriented modelling language, preferentially the UML language; characterised in that said components are divided into an envelope and at least one subcomponent, wherein said subcomponent comprises the existing functions of the component and said envelope comprises at least one interface for said communication relationships, wherein said envelope is devised as a UML stereotype. 

3. Device for modelling a mechatronic system in a motor vehicle, wherein the mechatronic system is structured in a plurality of components between which there are pregiven communication relationships, such as inquiry, invitation and order; wherein a mapping requirement is provided by means of which said components and communication relationships of the system are converted into elements of an object-oriented modelling language, preferentially the UML language; characterised in that said components are divided into an envelope and at least one subcomponent, wherein said subcomponent comprises the existing functions of the component and said envelope comprises at least one interface for said communication relationships, wherein said envelope is devised as a UML stereotype. 

 Here is what the Board had to say: 

** Translated from the German **

[2] The invention concerns the modelling of a mechatronic system in a motor vehicle wherein the structuring of the system in components and communication relationships is converted into an object-oriented modelling language by means of a mapping requirement. 

[2.1] The independent claims of [the requests on file] state that the object-oriented modelling language is preferentially the UML language, but they also state that it has to comprise a “UML stereotype”. The Board is of the opinion that thereby the claim determines that UML is the object-oriented modelling language as claimed. The Board notes that, as far as the following discussion is concerned, this interpretation is in favour of the appellant. 

[2.2] According to the preamble, the independent claims are directed to a method or a device “for modelling a mechatronic system”. The analysis of the object to be modelled, in order to choose the relevant elements, attributes and relationships, is an essential part of a modelling method. This step – in the present case, e.g. the specification of vehicle electronics by means of Cartronic – is not comprised by the subject-matter of claim 1 but precedes it and is presupposed by it […]. Thus the subject-matter of claim 1 is not a complete modelling method but at best part of it. Therefore, the Board interprets claim 1 to refer to a “method (suitable) for (use during the) modelling a mechatronic system”. The same holds true for claim 3. 

[2.3] Neither the mechatronic system as such nor its components are specified in more detail in the claims. When dealing with the communication relationships, claim 1 distinguishes, for example, between “inquiry” (Abfrage), “invitation” (Aufforderung) and “order” (Auftrag). The term “invitation” (Aufforderung) appears to be a clerical error “request” and has been corrected to read “request” (Anforderung) in the auxiliary request. 

[2.4] The Board is of the opinion that the wording of claim 1 does not make it clear whether the claimed structuring is a factual limitation of the system to be modelled (that is to say, to a system having the required components and communication relationships) of whether it designates a model that describes the mechatronic system via the required components and communication relationships. However, as the constructs of a modelling language, to which said components and relationships are to be converted by means of the “mapping requirement”, constitute a description of the mechatronic system, it appears to be more straightforward to assume that a description is at the basis of this mapping.

This interpretation is confirmed by the application, wherein Cartronic is referred to as “ordering concept” allowing for, inter alia, the claimed types of communication […] and by which models – i.e. descriptions – of mechatronic systems are established […]. 

[2.5] It is the intention of the invention to relate to methods and a device for mapping a Cartronic model into the object-oriented modelling language UML […]. 

The appellant has not contested this interpretation expressed in the notification by the Board. Consequently, what follows is based on this interpretation. Questions related to the clarity of terminology that is proper to Cartronic or UML (such as “inquiry”, “request”, “order”, “UML-language”, “UML stereotype”) or the concrete identifiers («interface» and «interfaceorder») and their precise signification can be left open in this decision. 

[3] In decision T 354/07 the competent Board has explained (cf. its headnote) that 

“as a rule, […] conceptual methods and meta-methods of software creation do not possess technical features relevant for patentability and, therefore, cannot establish inventive step, unless in a particular case it can be shown that there is a direct causal connection with a technical effect that is relevant for the solution of a technical problem.” 

Moreover, it has been said (cf. point [4] of the reasons) that 

“the design […] of complex systems [required the person carrying out this work] to act like an engineer and to apply technical expertise but [that] the achievement aimed at and obtained […] does not consist in providing a technical solution to a technical problem, but [for example] a model for data, processes and/or functions […].”

[3.1] Claim 1 discussed in T 354/07 is directed to a method for generating of software programs (31) using an electronic data processing system” wherein the software program has to carry out, inter alia, “controlling and/or regulation tasks” and wherein a “second function chart is established by means of a platform-independent first function chart (7)”, “the second function chart being adapted to specific requirements of [a] target platform.” Function charts within the meaning of the applications are “graphical representations of a model of the control system to be established, on different levels of abstraction, without there being an interaction with the system or the control procedures” (see point [7] of the reasons). 

[3.2] This subject-matter is very close to the subject-matter of the method claimed in the present case. Both methods concern the modelling of comparable technical systems. Both methods refer to two models or their representations, respectively, in a notation that is typically graphical, as well as to the mapping of one of those models into another. 

[4] In what follows, the Board endorses the explanations of decision T 354/07 cited above (point [3]). 

[4.1] Therefore, it is to be examined whether it is possible, for the method of claim 1 of both requests, to establish a causal link with a technical effect that is relevant for the solution of a technical problem. 

[4.2] The present application does not refer to the object to be modelled as an unspecific controlling or regulation system only but also – more narrowly - as a “mechatronic system in a motor vehicle”. However, even this indication is very generic and does not allow to deduce a concrete modelling task of a technical problem that has been considered in this context. 

[4.3] In contrast to the situation in T 354/07, there is no disclosure in the present application of an automatic (“using an electronic data processing system”) conversion of the models. Claims 1 and 2 of both requests do not refer to any computer assistance. Claim 1 is directed to a “device” but it remains open which method steps are assisted by the device, and how. 

[4.4] Again in contrast to the object of T 354/07, the present application does not deal with the automatic generation of program code from a model, as the representative appears to have confirmed during the oral proceedings (OPs) […]. Indeed, neither Cartronic (referred to as “preformal” in the description […]) nor UML are suitable for easily generating program code in an automatic way. 

[4.5] The application refers to the life cycle of software, which comprises very different phases such as problem analysis, systems specification, but also implementation, operation and maintenance. In this context, so goes the disclosure, the object-oriented procedure makes it possible to re-use “components and concepts” in a phase overlapping manner […]. When doing so, the graphic-based models, serving as documentation elements, support, inter alia, the communication between the groups of persons who participate in the development, among which vehicle manufacturers or software developers. However, the Board is of the opinion that a model is not imparted a technical effect because it serves the documentation of the system or because it simplifies communication, even if the system as such is technical. 

[4.6] There are a number of commercial software development tools available for UML, and it is one of the declared objectives of the application to make those tools available for models specified in Cartronic […]. However, those tools are neither claimed nor disclosed in detail. It may, therefore, be left open whether a technical effect is generated by the intended application of such a known tool to a Cartronic model converted to UML. 

[4.7] Therefore, the Board is unable to find a technical effect which is relevant for the solution of a technical problem and which has a causal connection with one of the claimed methods. The appellant has not named any such technical effect in order to overcome this objection raised in the summons to the OPs, either. 

[4.8] As a consequence, the Board comes to the conclusion that the subject-matter of claims 1 and 2 of both requests is not technical but corresponds to a method for a conceptual or mental activity and, as such, is excluded from patentability under A 52(2)(c) and (3). 

[4.9] In conformity with the established case law (see e.g. T 258/03), claim 3 of both requests, which is directed to a device, is considered to be an invention within the meaning of A 52(1). However, the mere unspecific indication of a “device for” assisting a non-technical method does not make any perceptible technical contribution beyond any commercially available PC known at the priority date. Therefore, the subject-matter of claim 3 lacks an inventive step under A 56. 

[5] As none of the requests complies with the requirements of the EPC, the appeal is to be dismissed. 

Should you wish to download the whole document (in German), just click here. 

To have a look at the file wrapper, click here. 

For a translation of the relevant parts of T 354/07, see my previous post dedicated to this decision. 

T 1225/08 – Drawing The Line

This decision deals with an appeal filed by the patent proprietor against the revocation of its patent by the Opposition Division (OD).

Claim 1 on file before the Board (which corresponds to claim 1 as granted) read:

A method of optically scanning a vehicle wheel, in particular a motor vehicle wheel, in which in a measuring step a wheel location is sensed by means of a light beam emitted by a light source and reflected to a position-sensitive receiver and the spacing of the sensed location relative to a reference location is measured from the directions of the emitted beam and the reflected beam, wherein for successive measuring steps the emitted beam and the position-sensitive receiver are pivoted synchronously about a common axis in a measuring plane which intersects the rim surface of the motor vehicle wheel at an obtuse or approximately right angle and which is below the horizontally arranged wheel axis, characterised in that the contours of the inward side, which is directed towards the wheel axis, of the wheel rim and of the radial wheel disc portion are ascertained from the measured spacings of adjoined wheel locations.

The decision contains an interesting paragraph on how to interpret a drawing of the closest prior art, document E4a, which is the international application published as WO 96/07880.

** Translated from the German **

[3] Document E4a discloses a method for balancing a wheel by means of balance weights, wherein the inner outline of the wheel rim is scanned and the scanned values are transmitted to a calculator. The calculator determines the inner outline of the wheel rim from the scanned values and then the optimized values and positions of the balance weights from the computed outline of the wheel rim […].

[3.3.1] Document E4a discloses several devices for determining the inner outline of the rim (Figures 1 to 4),

(Click to enlarge)

wherein the device disclosed in connection with Figure 3 is provided with a pivotally mounted distance meter.

In this embodiment the distance between the pivotally mounted distance meter and the respective point addressed at the outline of the rim is detected, and then the outline of the rim of the wheel is determined […].

Figure 3 shows a distance meter 6 mounted in a pivoting drive 9 and a dashed line 7 that extends from the distance meter to the wheel rim. According to the description of document E4, te distance meter depicted in Figure 3 may be “a mechanical, optical, ultrasonic or electrical (inductive or capacitive) distance meter.” […]

In its decision the OD endorsed the opinion of the [opponent] according to which

• an optical distance meter necessarily contains a light source and a receiver, and
• it follows from document E4a, and in particular its Figure 3, that the receiver consists in a position sensitive receiver and that the light beam emitted by the light source as well as the receiver are synchronously pivoted around a common axis.

However, Figure 3 is a merely schematic drawing of a pivotally mounted distance meter, which is to represent not only an optical but also, as explained above, a mechanical, ultrasonic or electrical (inductive or capacitive) distance meter. In such a simplified, undifferentiated and merely schematic representation, which is to comprise so different embodiments, the dashed line 7 extending from the distance meter to the wheel rim can also be understood to be a merely schematic representation of the distance or the connecting line between the distance meter and the respective point addressed at the outline of the rim, respectively. As a consequence, the skilled person implementing the optical embodiment mentioned in document E4a would understand the dashed line in Figure 3 to be merely the scanning direction of the optical distance meter, and would not take it as a hint that in such an implementation the dashed line is to represent a light beam that is emitted from a distance meter and that is reflected back to the distance meter by the rim.

It follows that document E4a does not disclose how the rotatable optical distance meter is to be equipped and which optical measurement principle is to be used. It also follows that the parts of the document E4a which deal with an optical implementation of the pivotally mounted distance meter do not teach the skilled person that the distance meter in such a configuration has to be a position sensitive receiver and that in addition to an optical receiver a light source that pivots in the same way as the receiver, or something of that kind.

In particular, the disclosure of document E4a does not exclude a pivotable optical receiver functioning with a stationary light source or without any scanning (antastend) emitted light beam (e.g. when a pivotable distance meter based on image acquisition is used).

Therefore, the Board is of the opinion that – in contrast to the understanding of the [opponent] and of the OD – document D4 does not directly and unambiguously disclose that the optical implementation of the pivotable distance meter comprises a position sensitive receiver functioning with a scanning (antastend) light source, and even less so that – as claimed – the emitter is pivoted together with the beam emitted by the light source synchronously about a common axis.

Therefore, all those features are novel over document E4a.

Finally, the Board maintained the patent as granted.

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T 1364/08 – Old And Young Together

This decision deals with an appeal subsequent to a refusal of an application by the Examining Division (ED).

Claim 1 on file before the Board read:

An adenovirus in which the VAI gene is lacking or mutated and which is capable of replicating in cells having an activated Ras-pathway but not in normal cells for treating a Ras-mediated cell proliferative disorder in a mammal, whereby the adenovirus is to be administered to proliferating cells in a mammal having a Ras-activated pathway under conditions which result in substantial lysis of the proliferating cells or for treating a neoplasm suspected of having an activated Ras-pathway in a mammal, wherein after the surgical removal of substantially all of the neoplasm the adenovirus is to be administered to the surgical site in an amount sufficient to result in substantial oncolysis of any remaining neoplasm.

The Board considers whether the invention is sufficiently disclosed:

[1] [As stated in the application,] “Genetic alteration of the proto-oncogen Ras is believed to contribute to approximately 30% of all human tumours. The role that Ras plays in the pathogenesis of human tumours is specific to the type of tumour” […].

[2] Protein kinase R (PKR), is an interferon-induced, double-stranded (ds) RNA-activated protein kinase which protects cells against viral infections.

In situations of viral infection, the dsRNA created by viral replication binds to the N-terminal domain of PKR and thus activates it. Once active, PKR is able to phosphorylate the translation initiation factor eIF2a. This inhibits further cellular mRNA translation, thereby also preventing viral protein synthesis such that viral replication and thus also cell lysis is prevented.

[3] Claim 1 refers to an adenovirus in which the VAI gene is lacking or mutated and which is capable of replicating in cells having an activated Ras-pathway but not in normal cells for treating a Ras-mediated cell proliferative disorder in a mammal.

[4] It has been established by case law that for a claim referring to a therapeutic application of a substance or composition, it is a requirement according to A 83 that it is demonstrated that the claimed compound has a direct effect on a metabolic mechanism specifically involved in the disease to be treated. This mechanism can be either known from the prior art, or be shown in the application per se, for example by the provision of experimental tests. Once this evidence is available, post-published evidence may be taken into account to back up these findings (see decision T 609/02 [9]).

[5] The application does not provide any experimental data proving that an adenovirus of claim 1 is able to replicate in cells having an activated Ras-pathway but not in normal cells. No data is present demonstrating that such a virus can be useful for the treatment of Ras-mediated cell proliferative disorders.

[6] However, […] the application as published contains a detailed summary of the “state of the art”.

Reference is made to document D16 of the list of documents given on pages 1 and 2 of the application, which is also document D16 in the present case. Page 5, lines 7 to 8 of the present application read:

“It has been demonstrated that in Ras transformed cells, dsRNA-mediated activation of PKR was blocked at the level of autophosphorylation.”

Document D16 itself moreover discloses that reoviruses, being dsRNA viruses, in their wild-type form lack an effective PKR counteracting mechanism. They cannot therefore replicate in normal cells but only in cells having an activated Ras pathway because downstream effectors of Ras inactivate PKR. This makes them a useful tool for the treatment of Ras-mediated cell proliferative disorders.

This is also disclosed in document D8, a published International patent application whose inventors and applicants are the authors of document D16.

On page 6, lines 12 to 13 it is stated that reoviruses use the host cell’s Ras pathway machinery to down-regulate PKR and thus reproduce. Claim 1 of document D8 reads:

“Use of reovirus for the manufacture of a medicament for treating Ras-mediated neoplasm in a mammal.”

[7] It was known that, contrary to reoviruses, various other viruses have evolved PKR inhibitory functions as a mechanism of defence against the host’s antiviral response in order to counteract viral replication restrictions. This is acknowledged [in] the application as published where the different “strategies” of four viruses to inhibit PKR activation in response to their presence are described.

[8] [Moreover] it is said that adenovirus produces large amounts of VAI RNA which inactivates PKR by acting as a competitive inhibitor of the full length viral dsRNA. PKR bound to VAI RNA is not activated. Reference is made to document D8 of the application’s own reference list, which is document D21 in the present case. In the section “Materials and Methods” under “Cells and virus” […] the authors of document D21 mention that the used adenovirus mutant has been described previously and was provided to them by the authors of a prior art document which is document D20 in the present case.

A further document on file, published by the authors of document D20, is document D7, which reports that a significant number of adenoviruses, in which the VAI gene has been mutated, lost their ability to counteract the cellular antiviral response mediated by the interferon-induced, dsRNA-activated protein kinase PKR (abstract), which made them unable to replicate in normal cells.

[9] Besides the description of the viral anti-PKR strategies of Vaccinia virus and of Parapoxvirus, the present application […] describes also that the Herpes simplex virus (HSV) infected cell protein 34.5 (ICP34.5) encoded by the γ34.5 gene of HSV prevents the antiviral effects exerted by PKR.

[… T]he application refers to document D32 of its own reference list (which is document (14) in the present case), by saying that it

“generically describes methods for selectively killing neoplastic cells which utilize altered viruses that are capable of replication in neoplastic cells while sparing surrounding normal tissue”.

Document D14 refers to the use of a HSV mutant that is incapable of expressing a functional γ34.5 gene product (see claim 1).

[10] The Board is of the opinion that the disclosure in the prior art is such that it is plausible that the adenovirus of claim 1 is useful for the therapeutic application referred to in the claim.

Under these circumstances the disclosure in post-published document T1 can be taken into account to back up these findings. In fact, document T1 contains experimental data demonstrating that an adenovirus in which the VAI gene is lacking or mutated can be used for oncolytic virotherapy of Ras-mediated cell proliferative disorders such as pancreatic tumours […].

Therefore the application is considered to disclose the invention in a manner sufficiently clear and complete to be carried out by a person skilled in the art as required by A 83.

NB: This decision was first reported on a nice weblog dedicated to French patent case law. The author notes that the case law relied upon, T 609/02, dealt with Swiss-type claims. The reasons for this decision contain the following paragraph:

“[9] Where a therapeutic application is claimed in the form allowed by the Enlarged Board of Appeal in its decision G 5/83 i.e. in the form of the use of a substance or composition for the manufacture of a medicament for a defined therapeutic application, attaining the claimed therapeutic effect is a functional technical feature of the claim (see G 2/88 and G 6/88 [headnote III; 9], for non-medical applications, see also T 158/96 [3.1]). As a consequence, under A 83, unless this is already known to the skilled person at the priority date, the application must disclose the suitability of the product to be manufactured for the claimed therapeutic application.”

Although the present decision presents its conclusion as a mere application of the established case law, it extends the reasoning to claims covering second or higher therapeutic applications that are not drafted in Swiss-claim form. The underlying assumption is that even in non-Swiss claims the claimed therapeutic effect is to be understood as a functional technical feature of the claim. Sounds reasonable to me.

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A post on a similar decision can be found here.