T 1456/06 – All Things Considered

Both the patent proprietor and the opponent appealed against the decision of the Opposition Division (OD) maintaining the opposed patent in amended form.

The Board found the main request and the first auxiliary request not to comply with the requirements of A 123(2). It then examined the second auxiliary request, and in particular its compliance with A 123(3).

The relevant claims of the file as granted read:

1. A polynucleotide comprising a sequence encoding a polypeptide capable of exhibiting a telomerase catalytic activity when associated with a telomerase RNA and which is:

(a) a polynucleotide having the sequence of the insert of plasmid ATCC 209016; or

(b) a polynucleotide which hybridizes to (a) under stringent conditions; or

(c) a polynucleotide which hybridizes to SEQ ID NO 3 or SEQ ID NO 8 under stringent conditions; or

(d) a polynucleotide sequence which is degenerate as a result of the genetic code to the sequences defined in (a) or (b).

44. The use of a polypeptide obtainable by expressing the polynucleotide of claim 1 in a vector of claim 5 or an immunogenic fragment thereof in the preparation of a vaccine capable of eliciting an immune response.

46. An immunogenic peptide of human telomerase protein, said peptide comprising at least 8, optionally at least 10, amino acids of a human telomerase protein encoded by the polynucleotide of claim 1 for use in medicine.

47. The use of an immunogenic peptide of human telomerase protein, said peptide comprising at least 5, optionally at least 8 or at least 10, amino acids of a human telomerase protein encoded by the polynucleotide of claim 1 for the manufacture of a medicament for the treatment of a condition mediated by cells expressing high levels of telomerase.

The second auxiliary request introduced some amendments:

Did the deletion of the reference to the “at least 8 amino acids of a human telomerase protein” violate A 123(3), as argued by the opponent?

The OD did not think so when it discussed the then first auxiliary request:

And the Board came to the same conclusion:

[21] Claim 46 of auxiliary request 2 […] is identical to claim 47 of auxiliary request 1 in opposition proceedings. In the decision under appeal, the OD held that, although the feature “..., comprising at least 8 amino acids of a human telomerase protein …” had been deleted in the amended claim 47, the scope of the claim had de facto remained the same. Consequently, the OD found that A 123(3) was not contravened. This finding has been contested by [the opponent].

[22] Albeit for different reasons, the board reaches the same conclusion as the OD.

[23] A 123(3) rules that a European patent may not be amended in such a way as to extend the protection it confers. According to the established jurisprudence of the Boards of Appeal, the legal notion of “protection conferred” in A 123(3) does not necessarily refer to the scope of protection of each single claim as granted, but rather to the totality of the protection established by the claims as granted as a whole. Thus, in order to assess whether or not an amendment introduced to the claims as granted offends against A 123(3), the question to be decided is whether or not, in comparison to the claims as granted, the protection conferred by the totality of the claims has been extended (see decision T 579/01).

[24] In the present case, the board is persuaded that, although the deletion of the feature “..., comprising at least 8 amino acids of a human telomerase protein ...” may possibly result in a different scope of amended claim 46 compared to that of claim 47 as granted from which the amended claim is derived, the protection conferred by the totality of the claims as granted has not been extended by the amendment because the subject-matter of amended claim 46 is within the scope of protection conferred by the patent as granted.

[25] Amended claim 46 is directed to the use of an immunogenic peptide of the human telomerase according to the invention for the manufacture of a medicament “... for the treatment of cancer by eliciting a Class I MHC restricted cytotoxic lymphocyte response against cells expressing high levels of telomerase”. In the board’s judgement, a medicament which elicits a lymphocyte response is nothing else than a vaccine. Thus, in other words, amended claim 46 is directed to the use of an immunogenic peptide of the human telomerase for the manufacture of a vaccine, in particular a therapeutic vaccine (“... for the treatment of cancer ...”) which elicits a specific type of immune response, namely a Class I MHC restricted cytotoxic lymphocyte response.

[26] Claim 44 as granted was directed to the use of an immunogenic fragment of the human telomerase according to the invention in the preparation of a vaccine capable of eliciting an immune response. Claim 44 as granted was not restricted to the treatment of a particular disease or to a specific type of immune response, as it is the case in amended claim 46. Thus, the more limited subject-matter of amended claim 46 falls within the scope of claim 44 as granted. The slight difference in wording between the two claims (amended claim 46 reads “... for the manufacture of...” instead of “... in the preparation of ...” as in claim 44 as granted) does not appear to have any significance with regard to the claim scope. If anything, the wording “... in the preparation of ...” in claim 44 as granted could be considered to have a broader meaning.

[27] For these reasons, [the opponent’s] argument that, as a result of the amendment introduced into claim 46, the protection conferred by the patent has been extended, cannot be accepted.

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