T 690/10 – What If

The appeal was filed against a refusal of an application based on an international application.

Claims 1 and 2 as originally filed read:

1. A pharmaceutical composition, for delivery of carbon monoxide to a physiological target, comprising a metal carbonyl compound or pharmaceutically acceptable salt thereof and at least one pharmaceutically acceptable carrier, wherein the metal carbonyl makes available CO suitable for physiological effect by at least one of the following means:

1) CO derived by dissociation of the metal carbonyl is present in the composition in dissolved form;

2) on contact with a solvent the metal carbonyl releases CO;

3) on contact with a tissue, organ or cell the metal carbonyl releases CO;

4) on irradiation the metal carbonyl releases CO.

2. A pharmaceutical composition according to claim 1, wherein the metal carbonyl compound is a complex of at least one of Fe, Mn, Ru, Rh, Ni, Mo or Co with at least one carbonyl ligand.

In its communication dated July 15, 2003, the EPO, acting as ISA, invited the applicant pursuant to Article 17D3(a) and Rule 40.1 PCT to pay seven additional search fees.

The ISA found that the subject-matter concerned metal carbonyl compounds releasing carbon monoxide in organisms to increase the CO-concentration and their use in therapy. Such compounds were already disclosed in document D3.

The ISA found that there were eight different inventions claimed: seven classes of CO-containing metal-complex compounds and one invention concerning formate- or oxalate-derivatives.

The ISA searched only the first of these inventions, i.e. pharmaceutical compositions for the delivery of carbon monoxide to a physiological target comprising the metal Fe, and the therapeutic uses of these compositions.

After entry into the regional phase, the Examining Division (ED) in its first communication, dated May 14, 2004, confirmed the lack of unity objection raised by the ISA and asked the applicant whether it wished to obtain a European search report for the other inventions under R 112 EPC 1973.

In response to this communication, the applicant filed a new set of claims with its letter dated July 5, 2004 and paid one additional search fee to have a search performed on these claims. It did not provide any indication as to the invention to which the additional search should be directed.

A second communication was issued by the ED on July 12, 2005, stating that the applicant could not amend the application at this stage. The ED further asked the applicant to indicate on which of the inventions as identified in the annex accompanying the communication under R 112 EPC 1973 the additional search should be performed.

In reply to this communication, the applicant requested the refund of the search fee and asked that examination be started on the set of claims filed on July 5, 2004. Arguments in support of unity of invention were also provided.

In its third communication, issued on November 8, 2005, the ED again confirmed the lack of unity of the application as filed and asked the applicant to restrict the application to the invention searched (the first invention).

The applicant replied by a letter dated July 31, 2006, filed a new set of claims and presented arguments for unity of invention and to the effect that the amended claims did not relate to unsearched matter.

A fourth communication was issued by the ED on 8 February 2007. Since the last set of claims still contained unsearched subject-matter, this set of claims had been considered as inadmissible on the basis of R 46(1) and R 112 EPC 1973 in conjunction with opinion G 2/92. The ED again requested the applicant to limit the application to the invention searched.

In reply to this communication, the applicant contested the findings of the ED. The claims were still not restricted to the only invention searched.

A summons to attend oral proceedings (OPs) was sent out on April 2009. the ED once more invited the appellant to “limit the application to the invention covered by the International Search Report”.

The OPs were held in the absence of the applicant. The application was refused.

Together with its appeal, the applicant filed a new main request identical to claim 1 as filed on July 31, 2006, as well as three auxiliary requests.

In what follows, the Board examined the unity objection with respect to the application as originally filed :

[3.1] A 82 EPC 1973 (which was not amended in the EPC 2000 revision) deals with the requirement of unity of invention and states the principle that a European patent application should relate to one invention only or to a group of inventions so linked as to form a single general inventive concept. R 30 EPC 1973 (in comparison to which no substantive amendments were made in the corresponding provision of the EPC 2000, i.e. R 44) defines the method for determining whether the requirement of unity of invention is satisfied in respect of a group of inventions claimed in a European patent application. Unity of invention exists only when there is a technical relationship among the claimed inventions involving one or more of the same or corresponding “special technical features”. The expression “special technical features” is defined in R 30 EPC 1973 as meaning those features that define a contribution which each of the inventions, considered as a whole, makes over the prior art.

Claim 2 of the application as originally filed constitutes seven equal embodiments representing a group of inventions which supposedly involve one or more of the same or corresponding “special technical features” defining a contribution which each of the inventions, considered as a whole, makes over the prior art in order to establish a technical relationship that guarantees unity of the application.

Firstly, the “special technical features” that this group of inventions can involve are all or scope of the features of claim 1, because this claim 1 includes the subject-matter of claim 2.

The subject-matter of claim 1 relates to

a pharmaceutical composition,

for delivery of carbon monoxide to a physiological target,

comprising a metal carbonyl compound or pharmaceutically acceptable salt thereof and at least one pharmaceutically acceptable carrier,

wherein the metal carbonyl makes available CO suitable for physiological effect

by at least one of the following means:

1) CO derived by dissociation of the metal carbonyl is present in the composition in dissolved form;

2) on contact with a solvent the metal carbonyl releases CO ;

3) on contact with a tissue, organ or cell the metal carbonyl releases CO ;

4) on irradiation the metal carbonyl releases CO.

In the description, it is stressed that “the ligands to the metal may all be carbonyl ligands, as e.g. in [Mn2(CO)10]” […], which means that such metal carbonyl compounds, including e.g. iron pentacarbonyl, must make available CO suitable for physiological effect by at least one of the means as defined under points 1 to 4 in claim 1, which is part of the common general knowledge of a chemist.

Secondly, there could be a common feature within claim 2 representing the “special technical feature” unifying the seven teachings concerning seven metals, which is not set out explicitly in this context, for instance a teaching relating to the use of a transition metal carbonyl to deliver CO with physiological effect.

Document D3 discloses

a pharmaceutical composition (see claim 6 in combination with claim 1),

for delivery of carbon monoxide to a physiological target (see claim 1),

comprising a metal carbonyl compound or pharmaceutically acceptable salt thereof and at least one pharmaceutically acceptable carrier (see claim 6 relating to iron pentacarbonyl representing a transition metal and even one of the particular metals mentioned in claim 2 of the application in suit),

wherein the metal carbonyl makes available CO suitable for physiological effect by at least one of the following means, namely on contact with a tissue, organ or cell the metal carbonyl releases CO (see column 1, lines 44 to 53 of document D3, which is in line with the argumentation in the paragraphs before).

Consequently, all the features of claim 1 of the application as originally filed, and even the feature relating to “transition metals” which were common to the metals in claim 2 itself, are anticipated by the teaching of document D3; finally, even one of the metals itself is already mentioned in document D3. Therefore, from the features contained in claim 1, none is left that could be regarded as a “special technical feature” to provide unity for the embodiments representing the group of inventions under claim 2, and there is also no additional feature which could serve as the special technical feature within the meaning of R 30 EPC 1973.

Consequently, in accordance with the ISA’s argumentation in the invitation to pay additional search fees and the argumentation of the ED, there remains no special technical feature that could define a contribution which any of the claimed inventions could make over the prior art.

Thus, the original set of claims does not satisfy the requirements of A 82. The non-unity objection raised for the initial claims by the International Search Division [sic] during the international search, and the resulting invitation to pay further search fees under R 112 EPC 1973 for a search with respect to inventions numbers 2 to 8, were thus justified.

[3.2] The appellant’s argument that the current non-unity objection would not have occurred if claim 2 of the application had not existed cannot succeed. Nor can the argument that it would have been no undue effort to the ISA to make a search for the subject-matter of the whole application without raising the non-unity objection.

As for the first argument, the fact is that seven specific examples for the metal atoms are mentioned in claim 2. That is the same situation as if seven separate claims had been set out with respect to the seven metals. They define a group of seven different teachings, and it is the first of these seven specific teachings, containing Fe as the metal, that is not new with respect to document D3.

Beyond this fact and the resulting conclusion, the board sees no possibility to consider speculative situations with respect to the subject-matter that could have been claimed, because their implications would be different and are not known.

The second argument relates to Chapter VII-12 of the PCT International Search Guidelines (PCT Gazette No. S-06/1998) giving the possibility to the searching authority to search a group of inventions together and to include the result in the ISR, even if they lacked unity. This regulation applies to a situation in which the search examiner is able to make a complete international search for more than one invention with negligible additional work. Nevertheless, it is fully within the examiner’s discretion to decide on this matter and nothing has been submitted by the appellant to suggest that this discretion was misused in the present case. The board cannot find any such reasons either.

The Board then found all the requests on file unallowable because none of the claims 1 of the main request or of the auxiliary requests 1 to 3 is restricted to Fe-containing metal-carbonyl complexes ; consequently, they all contain unsearched subject-matter.

The appeal was dismissed.

I am not much of a chemist, but it looks to me as if it was advantageous not to place a Markush-type claims (or equivalents) immediately after a broad main claim, in order to avoid unity objections (and all the troubles that may arise therefrom) during the search phase.

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