The patent proprietor and the opponent filed an appeal against the decision of the Opposition Division (OD) to maintain the patent in amended form.
Claim 1 of the granted patent read:
A method for determining T-cell epitopes within a protein comprising the steps of:(a) obtaining from a single human blood sample a solution of dendritic cells and a solution of naïve CD4+ and/or CD8+ T-cells;(b) promoting differentiation in said solution of dendritic cells;(c) combining said solution of differentiated dendritic cells and said naïve CD4+ and/or CD8+ T-cells with a peptide of interest;(d) measuring the proliferation of T-cells in said step (c). (my emphasis)
Claim 1 of the request found allowable by the OD read:
A method for determining T-cell epitopes within a protein comprising the steps of:(a) obtaining from a single human blood sample a solution of monocyte cells and a solution of naive CD4+ T-cells;(b) promoting differentiation of said monocyte cells to dendritic cells by a method as described in Example 1;(c) combining said solution of dendritic cells and said naive CD4+ T-cells with a peptide of interest;(d) measuring the proliferation of T-cells in said step (c). (my emphasis)
One of the key issues was the compliance of this request, which was also the main request before the Board, with A 123(3).
A 123(3) and A 69
[6] According to A 123(3), “the European patent may not be amended in such a way as to extend the protection it confers”.
According to A 69(1), “the extent of protection conferred by the patent ... shall be determined by the claims. Nevertheless, the description and drawings shall be used to interpret the claims.”
[7] The interpretation of the protection conferred by a patent according to A 69 is in general not one of the duties of the boards of appeal (cf. e.g. decision T 175/84). For the purpose of establishing whether the amendments of the main request fall foul of the provisions of A 123(3), it is however necessary to do so.
[8] Parts (a) and (b) of claim 1 as granted referred to obtaining dendritic cells from a human blood sample and to promoting the differentiation in said solution of dendritic cells, while the respective parts of claim 1 of the main request refer to obtaining monocyte cells and to promoting the differentiation of said monocyte cells to dendritic cells.
It is evident, and it has not been contested by the parties, that obtaining a solution of monocyte cells from a blood sample is not the same as obtaining a solution of dendritic cells from a blood sample. Thus, claim 1 as granted and claim 1 of the main request, when read on their own, provide protection for different subject matter.
[9] [The patent proprietor] agreed that normally such a shift in the extent of protection would not be allowable. It argued however that the case at issue was very particular because the claims as granted did not embrace the subject matter of the only example of the patent specification. Under such circumstances, the skilled reader would have realised that the claim language was inconsistent with the patent specification, and that what the patentee really wanted was protection for the method described in Example 1.
[10] It has therefore to be established whether the amendments of claim 1 result in an extension of the scope of protection conferred by the patent as a whole.
[11] According to the protocol on its interpretation, “A 69 should not be interpreted as meaning that the extent of the protection conferred by a European patent is to be understood as that defined by the strict, literal meaning of the wording used in the claims, the description and drawings being employed only for the purpose of resolving an ambiguity found in the claims” (Protocol on the interpretation of A 69, Article 1, first sentence).
[12] From this, [the patent proprietor] concluded that what determined the scope of protection in the present case was not the literal meaning of the term dendritic cells. Since the literal meaning of the term dendritic cells was not consistent with Example 1, in which monocytes were isolated, the skilled person would have concluded that the granted patent conferred protection for a method for determining T-cell epitopes comprising the steps of obtaining monocyte cells and differentiating those monocyte cells to dendritic cells. Thus, on a proper construction of claim 1, there was no extension of the scope of protection.
[13] The board agrees with [the patent proprietor] only insofar as the protocol on the interpretation of A 69 states that the description and drawings should be used for interpreting the claims even if there is no ambiguity in the meaning of the claims. But Article 1 of the protocol also makes reference to the balance that has to be struck between the interests of the patent proprietor in obtaining fair protection and a reasonable degree of legal certainty for third parties (Protocol on the interpretation of A 69, Article 1, third sentence). To give some guidance in this respect, it also explicitly states that A 69 should not “be taken to mean that the claims serve only as a guideline and that the actual protection conferred may extend to what, from a consideration of the description and drawings by a person skilled in the art, the patent proprietor has contemplated” (Protocol on the interpretation of A 69 EPC, Article 1, second sentence).
[14] The board has no doubts and the parties have not disputed that dendritic cells and monocytes are different cell types characterized by different features. Both cell types can be distinguished by morphological features as well as phenotypic and molecular markers, and the isolation of enriched dendritic cell fractions from blood samples was for instance disclosed in prior art document D8.
Thus, the skilled person would a priori not have had any reason to read a different technical meaning into the term “obtaining from a blood sample a solution of dendritic cells”. Had he wondered, as argued by [the patent proprietor], what sublineage of dendritic cells was used for the differentiation in said solution of dendritic cells, he might have turned to the description and Example 1 and would have found that monocytes were isolated and in vitro differentiated into dendritic cells. He might have wondered why the claim referred to isolating dendritic cells, but in the board’s opinion, the protocol on the interpretation of A 69 does not leave room for going a step further and reading [the patent proprietor]’s interpretation into claim 1. Doing so would require the skilled reader to completely ignore the wording of granted claim 1, which per se was not technically meaningless, with the consequence that the wording of claim 1 would merely serve as an empty shell.
This is clearly not in the sense of A 69 nor in the sense of the protocol on its interpretation. Moreover, the interest of third parties in legal certainty would be completely ignored, if [the patent proprietor]’s interpretation were found to be acceptable.
[15] [The patent proprietor] repeatedly referred to the amendments in claim 1 as removing an inconsistency between the claims and the description. To support its case, it cited several decisions from the boards of appeal relating to this issue.
In decision T 108/91, the competent board stated that the amendment of a granted claim to replace an inaccurate technical statement, which was evidently inconsistent with the totality of the disclosure of the patent, by an accurate statement of the technical features involved, did not infringe A 123(3). Importantly, in said case the technical term used in the claims was inconsistent with the totality of the disclosure of the patent. This is however not comparable to the present case where the general parts of the description of the application documents define the invention exactly as in granted claim 1 […], and the term monocytes is used only in Example 1 but nowhere else in the description.
In decision T 140/99, the meaning of a literally clear term in a claim was altered by adding a statement how the term had to be interpreted. The board accepted this amendment because it considered it to remove an inconsistency between the claim and the description. This is also not comparable to the present case where a literally clear technical term was not altered by stating how it had to be interpreted but instead was removed and replaced by a term with an equally clear but distinct technical meaning.
In decision T 371/88, the replacement of a restrictive term, which in its strict literal meaning did not clearly embrace a further embodiment of the description, by a less restrictive term clearly embracing also this embodiment was held to be permissible if two conditions are met. The conditions are: a) the restrictive term is not so clear in its technical meaning in the given context that it could be used to determine the extent of protection without interpretation by reference to the description and drawings of the patent, and b) it is quite clear from the description and the drawings of the patent and also from the examination procedure up to grant that the further embodiment belongs to the invention and that it was never intended to exclude it from the protection conferred by the patent. The present case differs from the case underlying decision T 371/88 because already the first condition is not met. The replacement of the terms “obtaining dendritic cells” and “promoting differentiation in said solution of dendritic cells” by “obtaining monocyte cells” and “promoting differentiation of said monocyte cells” cannot be regarded as the replacement of a more restrictive term by a less restrictive term. The term monocytes does not embrace dendritic cells.
In decision T 314/03, the replacement of a feature of the claim in plural form by the same feature in singular form, was considered to remove an inaccuracy or inconsistency which was said to be obvious to the skilled person upon reading the description. The present case is however about replacing a technically meaningful term with a technically entirely different and equally meaningful term. This constitutes an entirely different situation.
In conclusion, the board does not agree with [the patent proprietor]’s interpretation of the cited decisions and their applicability to the present case.
[16] In view of the above considerations, the board comes to the conclusion that the amendment of claim 1 extends the protection conferred by the granted patent. The main request does not meet the requirements of A 123(3). […]
The patent is revoked.
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