Monday, 24 October 2011

T 824/10 - Don’t Take It For Granted

Now that the Boards are not competent for dealing with protests under the PCT any more, the question of unity of invention has become rare in the case law of the Boards of appeal. But it has not disappeared altogether, as the present decision shows.

The applicant filed an appeal against the decision of the Examining Division (ED) to reject the application under consideration.

The application had been filed under the PCT. The claims as filed were directed at (1) the use of plasma membrane calcium ATPase (PMCA) inhibitors to inhibit sperm mobility in order to achieve a contraceptive effect (claim 1 and dependent claims), (2) a contraceptive composition comprising a PMCA inhibitor and a pharmaceutically acceptable carrier (claim 10 and dependent claims), and (3) a method for diagnosing infertility in a human male, comprising identifying a mutation or a post-translational modification of a gene encoding the PMCA (claim 13).

The EPO acting as ISA had found the application to contain six groups of inventions and had requested the applicant to pay five additional search fees.

Before the (EPO acting as) IPEA, on May 2, 2005, the applicant filed an amended set of eleven claims limited to the use of a particular PMCA inhibitor (i.e. an inhibitor directed against a plasma membrane calcium ATPase 4 (PMCA4) isoform). Claim 1 read (in English translation):
Use of plasma membrane calcium ATPase (PCMA) inhibitor for inhibiting sperm mobility in order to achieve a contraceptive effect, wherein the inhibitor is directed against the PMCA4 isoform.
The IPER only repeated the arguments and conclusions concerning the searched subject-matter.

After entry into the European phase, the EPO objected to the claims as referring to unsearched subject-matter and offered to establish a European search report in application of R 112 EPC 1973. The applicant paid an additional search fee but requested a search report for the whole set of claims on file because it was unitary.

The ED found the claims to lack unity and searched “invention 2”.

After some exchanges between the ED and the applicant, the latter filed a main request and two auxiliary requests as well as a request for reimbursement of the additional search fee. Claim 1 of all of the requests was identical to claim 1 filed on May 2, 2005. In the main request, the claim directed to a method for diagnosing infertility was deleted; in the first auxiliary request there was no claim directed to a contraceptive composition either. The second auxiliary request only contained claim 1.

The applicant withdrew its request for oral proceedings (OPs) and requested an appealable decision.

In its decision, the ED invoked R 164(2) and “independently” R 137(4) and explained that all the requests on file referred to unsearched subject-matter.

The main request before the Board was identical to the set of claims filed on May 2, 2005.

Here is what the Board had to say:

*** Translation of the German original ***

Unity of the main request before the Board

[3.1] Although R 164(2) EPC, on which the rejection was based, encompasses both the lack of unity of the present claims and (“or”) the fact that the claimed subject-matter has not been searched, it follows from the overall context of the impugned decision that what is meant is the second situation (i.e. the one following the “or”). Hereinafter, this situation is referred to as “R 164(2), second subclause”.

It is true that the decision of the ED is not based on the question of whether the last filed requests lack unity, but their unity is denied. As the underlying argumentation […] has a considerable impact on the question of unity of the claims as filed and, consequently, on the division into (groups of) inventions, which then affects the question of whether the second search fee was correctly used, this decision also deals with the unity of the subject-matter of the main request before he Board. This request corresponds to the version that was before the ED, plus the claim directed at fertility diagnostics.

Document D1 cited in the examining proceedings refers to plasma membrane calcium ATPase (PMCA) but does not mention any isoform thereof, and in particular isoform 4 (PMCA4). The statement in the abstract of this document, according to which the inhibiting effect of gossypol on the plasma membrane calcium++ pump could be explained by the fact that gossypol influenced the sperm mobility by means of a mechanism related to the structure and functions of the plasma membrane cannot be affirmed conclusively for [establishing] an interaction of the inhibitor gossypol with the plasma membrane calcium ATPase isoform 4 (PMCA4).

Consequently, the reasons given in the communication of the ED dated October 27, 2006, i.e. that gossypol, which is the object of document D1, would also have an inhibiting effect on PMCA4, are only based on presumptions (“It appears credible that gossypol prevents not only the other isoforms of PMCA but also isoform PMCA4 …” […]) Therefore, within the framework of an a posteriori consideration of unity of a patent application, they cannot be used for asserting that the single inventive concept is not novel or for questioning that this concept does involve an inventive step.

Nor is there any concrete reason to presume that substances according to dependent claims 2 to 4 would not act as inhibitors of PMCA4 but would inhibit other PMCA isoforms […]. After all, the mention of those substances in the claims contains a reference to claim 1 and already comprised a reference to claim 3 concerning PMCA4 in the claims as originally filed in their most narrow, and, therefore, decisive form.

The subject-matter of each of claims 1 to 10 according to the present main request is connected by the teaching that PMCA4 inhibitors can hinder the mobility of sperm and, therefore, have a contraceptive effect, which is the single common inventive concept. Conversely, this corresponds to the concept that a defect in PMCA4 as such has to result in hindering the mobility of sperm and can, therefore, be a cause for natural male infertility. This common inventive concept within the meaning of Rule 13.1 PCT and A 82 EPC, respectively, also supports the unity of the application when claim 11 according to the main request is included.

If one retraces (wird … nachvollzogen) the argumentation of the ED based on the problem solved such that the known feature “Disturbing the functionality of PMCA results in reducing the motility of sperm cells” is taken into account, one also comes to the conclusion that there is unity of invention between the subject-matter of claims 1 to 10 and the subject-matter of claim 11.

[3.2] As already explained under point [3.1] of this decision, the impugned decision […], which cites R 164(2) EPC and R 64(1) EPC as well as “independently” R 137(4) EPC, is based on the assertion that in particular the uses according to claims 1 of the different requests still encompassed unsearched subject-matter (R 164(2), second subclause).

According to its response to the notification pursuant to R 112 EPC 1973 dated June 19, 2006 (i.e. together with is written submission dated July 18, 2006, which is before the entry into force of the EPC 2000 and its new R 164) the appellant has paid a second search fee with the comment that a search be carried out for claims 1 to 11 that had already been filed together with the request for IPE dated May 2, 2005 ([…] these claims correspond to the present main request).

Despite this, the ED has carried out a search of invention 2 as defined in the invitation to pay further search fees dated October 15, 2004.

According to the wording of R 64(1) EPC, however, the European search report shall be drawn up for the parts of the application relating to inventions in respect of which search fees have been paid (Board’s emphasis). This means that the [applicant] has to indicate how it wants the paid search fee to be used and the search report is to be established for the corresponding invention.

In the present case, the ED was of the opinion that the initial and abiding lack of unity made it impossible to direct the search to the subject-matter indicated by the [applicant]. Even if this opinion was correct, the ED was not free to arbitrarily search the originally defined invention 2 but it had to at least try to clarify with the [applicant] for which subject-matter – which both sides agreed to be unitary – the search fee was to be used.

As this has not been done, it was impossible to define, at the moment of the decision, which subject-matter had definitely not been searched, and it was impossible to make the statement that the claims according to the requests on file did contain unsearched subject-matter.

Therefore, there was no basis for the decision of the ED – as a consequence, the decision has to be set aside.

[3.3] The further examination to be carried out after remittal to the ED will have to deal with all formal and substantial aspects of the EPC, including the examination of the amendments with respect to the requirements of A 123(2), the need to carry out corresponding searches and the decision of whether the second search fee is to be refunded or not.

To read the whole decision (in German), click here.

The file wrapper can be found here.