Friday, 15 April 2011

T 385/09 – Cool Cows

This decision deals with the revocation of the opposed patent by the Opposition Division (OD).

Claim 1 as filed read
A method of cooling animals, such as cows, whereby a liquid is applied between the hairs and/or on the skin of the animal, whereupon air is blown over the liquid.
Claim 1 as granted read:
A method of cooling animals, such as cows, whereby a liquid is applied between the hairs and/or on the skin of the animal, and wherein air is blown over the liquid, characterized in that, after applying the liquid air is blown over the liquid.
Claim 1 before the Board read:
A non-therapeutic method of cooling animals, such as cows, whereby a liquid is applied between the hairs and/or on the skin of the animal, and wherein air is blown over the liquid, and after applying the liquid air is blown over the liquid characterized in that the animals are cooled in a milking stall, in which milking stall a milking robot is disposed, so that the animals go to the milking stall spontaneously.
The Board delves into the questions of whether this claim contravenes A 53, whether the undisclosed disclaimer “non therapeutic” is allowable and whether the invention is sufficiently disclosed.

Allowability of the disclaimer

[2] The addition of the disclaimer “non-therapeutic” has not been objected to per se by the [opponent], even though the wording was not disclosed in the application as filed, nor was the difference between a therapeutic and non-therapeutic application of the method explicitly explained in any other manner.

However, the Board is satisfied that the application does contain teaching of a method which may possibly be regarded as therapeutic (cooling of cows in a heat stress), but also teaching of a method which is clearly not therapeutic, neither in view of its main purpose, nor because of any unavoidable side effect (cooling of healthy cows for luring them to the milking stall, see below).

The patent was revoked in the first instance for contravening A 53(c). Thus the disclaimer was also necessary for disclaiming subject-matter being excluded from patentability. Following decisions G 1/03 and G 2/03 [headnote II.1], such disclaimers are allowed even when not disclosed. The Board is also satisfied that the disclaimer is appropriately formulated, has no bearing on novelty or inventive step, and is sufficiently clear and concise (G 1/03 and G 2/03 [headnote II.2-4])

Exceptions to patentability under A 53

[3.1] According to A 53
“European patents shall not be granted in respect of:
(a) inventions the commercial exploitation of which would be contrary to “ordre public” or “morality” …
(b) …
(c) methods for treatment of the … animal body by … therapy … practised on the … animal body…”
[3.2] The [opponent] contended that if the method were non-therapeutic, it would result in cooling an animal which is in a normal state so that its temperature would fall below an abnormal level. This however would cause suffering to the animal and therefore be contrary to morality according to A 53 a).

This cannot be followed. According to claim 1 the method should have the effect that “the animals go to the milking stall spontaneously”. An animal would only behave so in expectation of a reward, i.e. if the animal is subjected to a treatment which is perceived as pleasant. Hence the skilled person would clearly exclude from the scope of the claimed method the possibility of reducing the animal's body temperature to such a degree that it would cause suffering to the animal.

[3.3] With reference to the case law on the meaning of “therapy” it is understood that therapy is concerned with bringing a body from a pathological state back into its normal healthy state or preventing a pathological state (see decision T 774/89 [2.3.4]).

As pointed out in decision T 329/94 [headnote] when a method step has to be assessed with regard to the exclusion of subject-matter from patenting under A 53(c) the most important point is the purpose and inevitable effect of the step at issue.

[3.4] In the present case the method is aimed at cooling animals subjected to heat […]. It is understood that this means heat caused by common and natural circumstances (typically weather conditions) so it is also understood that such temperature ranges, even if being defined as “heat” in the patent, will in most cases not cause any particular harm to the animals.

Further, the animals to be cooled by the claimed method are animals such as cows; such animals are able to regulate their body temperature in response to the ambient temperature. When temperature raises, an animal such as a cow may feel “hot”. However, this by itself does not mean that the animal is in a pathological state and therefore a moderate cooling of this animal does not result in preventing a pathological state either, since such an animal is still able to regulate its body temperature naturally within certain limits.

As the [patent proprietor] has pointed out, the maximal temperature to which an animal can be exposed in its cowshed is fixed by various regulations in many states. But even apart from that, the skilled person would know that unbearable temperatures should never be allowed.

Consequently, cooling this animal does not cure, alleviate, remove or lessen the symptoms of any disorder or malfunction of the animal's body, nor does cooling prevent or reduce the possibility of contracting any disorder or malfunction, since no such disorder or malfunction would normally occur if the animal would not be cooled.

As stated in decision T 774/89 a therapeutic treatment starts from (an existing or likely imminent) pathological state, whereas a non-therapeutic treatment starts from (and of course ends in) a normal, healthy state. The Board finds that there is ample room for carrying out the invention on cows that are neither in a pathological state nor are likely to develop one.

[3.5] In other words, in the present case the claimed method (since non-therapeutic) must be construed as being directed at a treatment of animals which are in a normal, healthy state, even if feeling hot. Accordingly, the claimed method is not a method for treatment of the animal body by therapy but a method for providing a pleasant sensation to a healthy animal so that it enjoys going to the milking stall in order to experience this pleasant feeling again.

[3.6] The [opponent] argued that discomfort is a sign of a pathological state irrespective of the origin of discomfort and that therefore its relief is always to be considered as a therapy. This cannot be accepted either. For example, an animal can feel discomfort because it is hungry. If the [opponent] were right in stating that providing relief is to be considered as a therapy, then feeding this animal would be a therapy too. This approach would thus encompass even the most natural and common everyday activities as therapeutic methods. The absurdity of this interpretation is evident. Accordingly the Board finds that providing relief from discomfort is not necessarily a therapy.

Objection under A 100 b)

[4] As a preliminary remark, the Board notes that this ground of opposition was not decided on in the decision under appeal. In spite of that, the Board finds it expedient to treat this issue, irrespective of the remittal for novelty and inventive step […]. In the present case this appears sensible, given that the argumentation of the [opponent] with respect to A 53(c) was in close relationship with its arguments on A 100(b).

[4.1] The [opponent] argued that it is not clear why a non-therapeutic method of cooling of animals (i.e. which does not provide any relief) should entice these animals to go to a milking stall spontaneously.

As already explained, the aim of the claimed method is to provide an animal (even if the animal is not ill) a pleasant feeling.

Accordingly, the Board finds it plausible that a healthy animal can be enticed to go to the milking stall in expectation of a pleasant sensation, and that this pleasant sensation may be provided, depending on the circumstances, by a cooling liquid applied to the skin.

[4.2] The [opponent] further argued that the patent specification does not indicate any temperature range, so that it would amount to an undue burden for the skilled person to find out the adequate temperature for carrying out the claimed method. However, it is clear for the skilled person that the animal should not be cooled to a degree which would render the treatment unpleasant. Thus, the temperature range within which cooling can be carried out is narrow.

Accordingly, it is not an undue burden for the skilled person to determine by trial and error the adequate temperature within a narrow range. The Board adds that within the framework of a cowshed with a milking stall, in the absence of any further pointer in the patent, the skilled person would simply use tap water, or at least start to experiment with tap water, which typically has a temperature of 10-15 ºC.

[4.3] It has also been argued that because the claimed method is “non-therapeutic” which means that it solely concerns healthy animals, A 100(b) (A 83) is only fulfilled if the skilled person is able to distinguish the therapeutic application of the cooling method from the non-therapeutic one, and information to this effect is not given in the patent […].

Formulated differently, the skilled person is not given any teaching to carry out the method in a manner that would safely keep him within (or out of) the non-therapeutic application, i.e. within the scope of the claims. This means, according to the [opponent], that the skilled person can not carry out the invention as required by A 100(b).

[4.4] The Board notes that it would not be very equitable towards patentees to allow a non-disclosed disclaimer on the one hand and then to require a specific disclosure, i.e. technical teaching how the invention should be carried out right up to, but not entering the scope of the disclaimed subject-matter. This approach would in practice only allow disclosed disclaimers.

In fact, this issue is irrelevant for compliance with A 100(b). This article mirrors A 83, which is only concerned with the question whether the teaching is sufficient to carry out the invention (over its whole scope at least, but unproblematic if beyond). However, A 100(b) is not concerned with the question whether the exact limits of the scope of protection ought to be or can be determined from a legal point of view. The first question is directed at the skilled person, the second at the patent lawyer. At most, this latter may be a question of clarity of the claims (A 84).

That said, the Board holds that the skilled person can be expected to distinguish between healthy and ill animals. Further, a diligent farmer is supposed to be cautious when treating ill animals, so it is likely that he would apply any unusual method on ill animals only very carefully, probably only after having consulted a veterinarian. The patent itself teaches that the application of the method should be made dependent on the health condition of the animal […]. This by itself should be sufficient for the skilled person to keep the therapeutic and non-therapeutic applications apart. Concerning the technical realisation of the cooling, this can be done irrespectively of whether the animal is in a normal state or not. In other words, although the method is not intended for ill animals, there is no technical hindrance which would preclude from carrying it out if the animal were ill.

The Board then remitted the case to the OD for further prosecution.

To read the whole decision, click here. The file wrapper can be found here.

NB: This decision has also been discussed on Le blog du droit européen des brevets.