Interpretative Spotlight: “Active”

The patent proprietor filed an appeal against the decision to revoke the patent under consideration.

Claim 1 of the main request read:

Use of fluprostenol isopropyl ester as the sole active ingredient for the manufacture of a medicament for topical application for the treatment of glaucoma and ocular hypertension. (my emphasis)

The Board found this claim to comply with A 123(2):

[3] A 123(2) stipulates that the European patent may not be amended in such a way that it contains subject-matter which extends beyond the content of the application as filed. According to the established jurisprudence of the boards of appeal, this content encompasses what can be directly and unambiguously deduced from the explicit and implicit disclosure of the application as filed in its entirety.

[3.1] As a first step, the meaning of the expression “active ingredient” has to be clarified. According to the respondent, it comprises every compound having any activity. Such a definition does not appear to be suitable in view of the fact that virtually every compound interacts with its environment somehow and therefore shows some sort of activity. Such a meaning of active ingredient would restrict claim 1 to the use of IEP as such, i.e. to the use of IEP in the absence of any additional compounds including excipients or preservatives, and this is clearly not how the skilled person would read the sole claim of the main request.

Taking into consideration that the skilled person makes a distinction between active ingredient on the one hand and excipients on the other hand, it might be argued that active ingredient encompasses every compound having any pharmacological activity including pharmacological activities not related to those defined in the claim. However, such an interpretation amounts more or less to the same restriction of the claim as the former definition. The appellant cited water, which may be used for treating dehydration, or sodium chloride, which is suitable for treating sodium deficiency, as examples of compounds having a pharmacological activity. The skilled person would not associate the exclusion of these compounds with the feature “as the sole active ingredient”. As a consequence, this definition is not correct either.

The board concludes that “active” in the feature “as the sole active ingredient” implies an activity in relation to the treatment defined in the Swiss-type claim. As a consequence, the feature “as the sole active ingredient” excludes further compounds characterised by a pharmacological activity which mitigates or otherwise influences the symptoms of glaucoma and ocular hypertension. It does not, however, exclude further compounds such as preservatives, co-solvents and viscosity building agents.

In this context, it is noted that some ocular preservatives such as boric acid may also be used as active ingredients for the treatment of inflammations, which in combination with conjunctival hyperemia and edema are known side effects of prostaglandins used in the treatment of ocular hypertension including FIE (see page 2, lines 13-15, and page 32, lines 1-12, of the original application). However, the fact that such preservatives may be able to lessen some side effects possibly caused by FIE does not make them active ingredients in the sense of the claim. These preservatives are not excluded from the claim of the present main request in view of the fact they do not have any activity in connection with glaucoma and ocular hypertension.

The board therefore concludes that the Swiss-type claim according to the main request relates to a medicament for topical application which, apart from FIE, does not comprise additional compounds which are able to treat glaucoma and ocular hypertension. Further compounds such as e.g. the preservatives, co-solvents and viscosity building agents mentioned above are not excluded.

[3.2] The board notes that the feature “fluprostenol isopropyl ester as the sole active ingredient” is not as such mentioned in the original application. The original application cites FIE as one of the preferred, albeit not the most preferred, active ingredients (see page 4, lines 14-17, and page 7, lines 4-8), but does not specify expressis verbis that it should be used as the sole active ingredient. In fact, the general description does not explicitly disclose monotherapy for any of the active agents therein; it merely says that certain cloprostenol and fluprostenol analogues as well as compounds according to general formula (IV) are useful in treating glaucoma and ocular hypertension (see page 4, lines 22-26, and page 7, lines 10-11). Original claim 16 concerns the “use of a compound of formula (IV) … for the manufacture of a medicament for topical application for the treatment of glaucoma and ocular hypertension”. These passages encompass both monotherapy and combination therapy and therefore cannot serve as a basis for the feature “fluprostenol isopropyl ester as the sole active ingredient”.

However, the evaluation of the overall content of a patent application also requires an analysis of the examples disclosed therein. The original application comprises nine examples.

Examples 1 to 4 concern the synthesis of some active ingredients and are therefore irrelevant in this context. Examples 5 and 6 deal with pharmacological assays of some active ingredients including FIE (compound B) in which the intraocular pressure lowering effect (example 6) and development of hyperemia as an unwanted side effect (example 5) were examined on the basis of animal models. Examples 7 and 8 also describe animal models in which the intraocular pressure lowering effect of some active ingredients not including FIE are studied. Although not relating to pharmaceutical formulations, as was correctly pointed out by the respondent, these examples nevertheless reveal that the active ingredients disclosed in the original application are suitable for monotherapy.

Example 9 discloses eight pharmaceutical formulations for topical use for lowering the intraocular pressure. Although different active ingredients are used (various cloposterol derivatives in formulations 1-3, 5 and 7-8; FIE in formulation 4; and 13,14-dihydrofluprostenol in formulation 6), these formulations have one thing in common, namely that a sole active ingredient in the sense as defined above was used.

[3.3] To summarise: the general part of the description does not explicitly refer to the use of a sole active ingredient but includes both monotherapy and combination therapy. All the formulations of example 9 comprise a sole active ingredient, there is not a single formulation exemplifying combination therapy. The concept of monotherapy is confirmed by examples 5 to 8, in which the suitability of the active ingredients as sole active agents in terms of pharmacological effects and side effects is shown.

The board concludes therefrom that monotherapy, i.e. the use of a sole active ingredient, constitutes the preferred form of administration in the original application. This preference is not restricted to FIE but concerns all the active ingredients disclosed in the original application and therefore has general character. FIE was selected from a list of compounds, and in particular from a list of six particularly preferred active ingredients (see page 7, lines 4-8) and combined monotherapy (as the sole active ingredient), which constitutes de facto the only administration form envisaged in the original application. Under these circumstances, the board concludes that the feature “fluprostenol isopropyl ester as the sole active ingredient” is not the result of two selections from different lists, as basically only one selection, i.e. the selection of FIE from a list of six preferred active ingredients, has to be made in order to arrive at the feature mentioned above. As a consequence, the requirements of A 123(2) are met.

The case was then remitted to the first instance for further prosecution.

To download the whole decision (T197/08), click here.

The file wrapper can be found here.

T 1721/07 – No Self-Service

The patent proprietors filed an appeal against the decision to revoke the patent under consideration.

The decision dated March 29, 2012, – wherein this appeal was dismissed – also contains an interesting paragraph on a request filed on May 4, 2012, concerning a correction of the minutes of the oral proceedings (OPs) before the Board. In particular, the patent proprietors requested:

• that the sentence “[The chairman] presented the essential content of the file” be deleted because only the requests of the parties were presented, and not the essential content;
• that a 30-lines passage – wherein the patent proprietor summarised the arguments of the parties and the conclusions of the Board – be inserted after the sentence “Then the parties were given the opportunity to speak”;
• that the minutes mention that the patent proprietor had raised their objection – according to which the decision not to admit auxiliary requests 2 to 4 was a substantial procedural violation – before the announcement of the decision by the Board, and not afterwards;
• that the sentences “When asked by the chairman, the parties declared that they did not wish to file further requests or statements” and “Then the chairman declared the factual discussion to be terminated”, because these events had not taken place ; the sentence “After deliberation of the Board, the following decision was announced” should also be amended to read “The Board then announced the following decision”.
• that several grammatical errors be corrected.

As you might have guessed, the Board did not grant these requests:

*** Translation of the German original ***

[15] It follows from R 124, according to which minutes shall be drawn up and copies transmitted to the parties, as well as from Article 6(4) RPBA, according to which the minutes shall be drawn up by the Registrar or such other employee of the Office as the Chairman may designate, that the minutes of OPs (in appeal proceedings) are to be drawn up by the Board. This duty cannot be transferred or left, in whole or in part, to the parties or even only one of the parties.

This alone would be enough for dismissing the request of the [patent proprietors] to have the minutes of the OPs corrected along its proposition […]. However, the Board wishes to comment on the submission of the [patent proprietors] as follows:

[16] The sentence “He presented the essential content of the file” is a well-known standard formulation that is often used in minutes of OPs before Boards of appeal. To which extent the “content of the file” is actually presented at the beginning of the proceedings depends on the individual case. According to the established practice of the present Board the number of the appeal, the language of the proceedings, number and title of the patent, the impugned decision, the parties and their representatives as well as their requests are mentioned; this has also be done in the present case.

[17] Quite obviously – and understandably – the elements the [patent proprietors] wanted to have added [to the minutes] reflect their view of the OPs and summarise the arguments they consider to be relevant. However, as already mentioned, a party cannot be allowed to decide or have an influence on the contents of the minutes. In practice, a summary of the arguments made in the course of the OPs, as the one the [patent proprietors] wished to have included in the minutes of te OPs, is not, as a rule, given in the minutes but – although in somewhat different form – in the written decision, together with the written submissions. This has been done in the present case, too […].

[18] The third and fourth requests of the [patent proprietors] do not correspond to the recollections of the Board. The Board has noted the events in its minutes when they occurred (zeitgleich) and does not see any reason why it should correct the minutes at the request of one party, more than one month after the events, so that they reflect another sequence of events than when they were drafted.

[19] Although the correction of grammatical errors might not be disputed, the Board does not see any need for correcting minutes, provided that the errors do not result in making the minutes faulty; however, this appears not to be the case here.

To download the whole decision, click here.

The file wrapper can be found here.

T 412/09 – A Consistent Picture

This is an appeal against the refusal of an application. The decision contains a useful reminder on the link between patent documents and common general knowledge (CGK).

[2.1.3] In its letter of reply the appellant disputed that the image acquisition procedure referred to above belonged to the CGK and submitted that according to the established case law patents cannot be used to establish CGK.

While the Board concurs with the appellant that the CGK of the person skilled in the art is, as a general rule, established on the basis of encyclopaedias, textbooks and the like (see decision T 890/02 [2]), contrary to the appellant’s submissions this does not meant that a disclosure is automatically discarded as evidence in this regard for the mere fact of being disclosed in a patent specification. On the contrary, the case law contemplates exceptions to the general rule mentioned above and allows in particular circumstances the establishment of CGK on the basis of the content of patent specifications (see T 890/02 [2], and “Case Law of the Boards of Appeal” EPO, 6th edition, 2010, chapter I, section C.1.5 and last paragraph of section C.3.2.6), and in particular when a series of patent specifications provides a consistent picture that a particular technical procedure was generally known and belonged to the CGK in the art at the relevant date (see decisions T 151/05 [3.4.1, 4.1, 4.3] and T 452/05 [2.4.1, paragraph (b)(ii)]).

[… D]ocuments A1, A2 and A3 provide a consistent picture that setting the exposure time of a CCD camera to be identical to or an integer multiple of the display period of a rapidly varying periodic display to be captured by the camera constituted a common practice in the art. Therefore these documents constitute prima facie evidence that this practice constituted CGK at the priority date of the application in suit, and the appellant’s mere submission that patents cannot be used in establishing CGK is insufficient to rebut or displace this evidence or to cast doubts on the CGK under consideration.

The appellant submitted that documents A1 to A3 pertain to technical fields different from that of the claimed invention […]. The Board notes, however, that in the circumstances of the present case the question is not whether the skilled person would be expected to consult these documents when operating the apparatus of document D2, but whether the documents constitute evidence supporting the position that the common practice mentioned above was generally known to him. In documents A1 to A3 different value ranges of the exposure time of the CCD camera (in particular, “2 or more” periods in document A1 (paragraph [0058]), “a few tens” in document A2 (paragraph [0041]), and “the shortest [period] ... multiplied by an integer” in document A3 (paragraph [0176])) are selected in order to cope with the specific technical situations encountered in the respective technical fields; however, it is taken for granted in the disclosure of all these documents that, when capturing a periodic display with a CCD camera, the value of the exposure time of the camera is to be selected to correspond to the display period or to a multiple integer of the same. This procedure relates to the operation of the CCD camera itself and not to the specific technical field in which the camera is being used in each of documents A1 to A3.

[2.1.4] Having regard to the above considerations, the Board concludes that the apparatus defined in independent claim 2 of the main request does not involve an inventive step (A56).

Should you wish to download the whole decision, just click here.

The file wrapper can be found here, and a French summary of the decision here.

T 768/08 – Lethal Process

This is an appeal against the refusal of the application under consideration by the competent Examining Division (ED).

Claim 1 of the main request before the Board read (Compared to Claim 1 as filed, additional features are underlined, deleted features are crossed out).

A hair treatment composition containing, as the internal phase of an emulsion which itself constitutes the hair treatment composition, a silicone component, comprising droplets of silicone blend the silicone component being provided as a single blend, and the single blend being in the form of an aqueous emulsion which is added to the composition during the manufacture, the silicone blend comprising

(iii) from 50 to 95% by weight of the silicone component of a first silicone having a viscosity of at least 100,000 mm**(2)/sec at 25ºC, and

(iv) from 5 to 50% by weight of the silicone component of a second silicone which is functionalised,

and wherein the weight ratio of the first silicone to the second silicone in the silicone component is from 6:1 to 2:1.

In what follows, the Board deals with the clarity of the request on file :

[3.2] Process steps, such as the features “the silicone component being provided as a single blend”, “the single blend being in the form of an aqueous emulsion” and “which is added to the composition during the manufacture”, which were not present in Claim 1 of the previous claims requests, have been included in Claim 1, which concerns a composition of matter, to define the internal phase of that composition of matter.

[3.3] Since Claim 1 attempts to define the internal phase of the composition of matter, a hair treatment composition, hence the hair treatment composition, by reference to features of the process of its manufacture, i.e. it contains product-by-process features, it has to be decided whether Claim 1 fulfils the requirements of clarity stipulated by A 84, in particular having regard to the product-by-process features used.

[3.4] Before dealing with the objections under A 84, it is worth recalling the principles underlying the requirements of clarity under A 84 for claims for products defined in terms of the process of their manufacture, e.g. product-by-process claims.

Principles underlying the requirements of clarity under A 84,

in particular as regards product-by-process claims

[4] The second sentence of A 84 stipulates that the claims must be clear (Principle of clarity).

[4.1] The principle of clarity established by A 84 is an aspect of a broad general principle of law, i.e. legal certainty, namely the requirement that e.g. legal texts be clear and precise, which conveys the idea of predictability (scope and purpose of the text must be predictable).

[4.2] As established in G 2/88 [2.5], as regards drafting and amending claims in respect of inventions which are the subject of European patent applications and patents, the principle of clarity requires that the wording used must be such as to define the matter for which protection is sought in terms of technical features of the invention, having regard to the particular nature of the invention, having regard also to the purpose of the claims. The purpose of the claims is to determine the protection conferred by the patent (A 69), and consequently the rights enjoyed by the patent proprietors, having regard to the patentability requirements of A 52 to A 57. Still according to G 2/88 [7], the technical features of the invention are the physical features which are essential to it. As regards a claim to a physical entity, the technical features are the physical parameters of the entity, which in appropriate cases may be defined functionally. Hence, a primary purpose of the claim is to permit, in order to assess the patentability requirements, a comparison with the available state of the art.

[4.3] Although the breadth of a claim does not necessarily imply a lack of clarity, it is nevertheless subject to a further aspect of the principle of legal certainty, the requirement of proportionality, namely the weighing up and balancing of the contribution to the art and the sought-for scope of protection, i.e. the defined scope must be commensurate to the contribution to the art. Hence, the allowable breadth of a claim and the relevant extent of the patent monopoly, as defined by the claim, should correspond to the technical contribution to the art, thus to the invention as disclosed in the description (T 409/91 [3.3]). This implies that if a claim does not contain all of the features which are essential to the definition of the invention, it is not supported by the description (A 84).

[4.4] Already since decision T 2/80 [2, last sentence], it is established case law (C.II.B.5.3.5) that the principle of clarity stipulated by A 84 requires that it must be possible to understand the claims without reference to the description. Hence, as regards clarity, reliance to the description, or to A 69, cannot be considered as a substitute for an amendment which would remove the lack of clarity. This is especially applicable in examination proceedings, where the value of future legal certainty is paramount. Hence, as established in the case law (C.II.B.5.3.5, in relation to T 1279/04), amendments rather than protracted arguments should be the answer to genuine difficulties of interpretation, in particular in examination proceedings.

[4.5] Chemical substances may be defined by scientific designations, chemical formulae (explicitly foreseen in R 49), physical and structural features, properties as well as by the process of their manufacture (product-by-process claims). Hence, as regards clarity, for each chemical substance, the question arises as to which of these formulations of definition can unambiguously define the sought-for subject-matter and how the claim should enable the claimed subject-matter to be distinguished from the prior art.

[4.6] Product-by-process claims fulfil the need of defining chemical substances (such as macromolecules, complex compositions), which cannot be defined by their structure but, by way of the process of their manufacture. The justification for that kind of claim lies in the acknowledgement that the inventor is rewarded, not because of the theoretical explanation of the structure of the product but, for making available the manufacture of the claimed product (Münchner Gemeinschaftskommentar, 7th edition, May 1985, A 84, Notes 107-109, which inter alia cites the BGH decision “Trioxan”, published in GRUR 1972, 80).

[4.7] However, as correctly mentioned in the said Münchner Gemeinschaftskommentar (Note 108, which inter alia states that the Guidelines do not set any clarity restricting conditions on the drafting of product-by-process claims, with reference the opinion expressed by Bühling in GRUR 1974, 299), it is established case law of the Boards of Appeal of the EPO (C.II..B.6.1, 6.2 and 6.3), since T 150/82, that the choice of a product-by-process format for drawing up a claim is not at the free disposal of the applicants, unless two specific conditions are fulfilled:

(a) the claimed product itself fulfils the patentability requirements (which implies that a new and inventive process for manufacturing a known product cannot be used to define the known product with a product-by-process claim) (established case law, C.II.B.6.2); and,

(b) there is no other information available in the application for satisfactorily defining the claimed product by reference to its composition, structure or testable parameters (established case law, C.II.B.6.3, in particular T 956/04  [3.2]).

[4.8] According to T 150/82 [10, last sentence], the requirement that

“the form for a claim to a patentable product as such defined in terms of a process of manufacture (i.e. product-by-process claims) should be reserved for cases where the product cannot be satisfactorily defined by reference to its composition, structure or some other testable parameters” was to be established “in order to minimise uncertainty” (emphasis added by the Board).

[4.9] As regards the requirement that the claimed product itself fulfils the patentability requirements, it implies that all of the specific process conditions (such as starting materials and reaction or formulation or preparation conditions), needed to necessarily obtain the claimed product, as inevitable process product, whose novelty could then be established by e.g. comparative tests, should be defined by a product-by-process claim (Case law, C.II.B.6., in particular with reference to T 300/89, T 552/91 and T 956/04 [3.5.3-5, 3.6.7, 3.7-8]). Therefore, for such a claim to be clear, the product-by-process features should make it possible to establish the distinctions of the inevitable product of the product-by-process claim over the prior art.

[4.10] A combination of product and process features in a product claim is permissible (Case Law, II.B.6.4). However, as regards the process-by-product features, the criteria developed in T 150/82 apply (Case law, C.II.B. 6.4, e.g. T 129/88 [2.2.1-4]).

Lack of clarity (A 84)

[5] Claim 1 concerns a hair treatment composition, i.e. a composition of matter, in the form of an aqueous emulsion, the internal phase of which (i.e. the phase dispersed in the continuous water phase) comprises a silicone component. Claim 1 does not define precisely what the silicone component is, but indicates that it is provided as a single blend, in the form of an aqueous emulsion, which is added to the composition during manufacture. Also the term “single blend” is not defined as such (i.e. what kind of blend is meant). The weight percentages and ratios of the silicones comprised in the single blend are specified, which however can only relate to the those used in the preparation of the blend.

[5.1] The alleged contribution to the art by the claimed composition, as gathered from the application as filed […], is the provision of intimate blends of combinations of silicones which result in individual particles comprising a mixture of silicones. This alleged contribution was to be contrasted to the known, separate addition of emulsions of each of the constituent silicone components to the hair composition […]).

[5.2] It is apparent from the above that the alleged contribution relies on a particular intimacy of the combination of silicones, such as to result in individual particles comprising an intimate mixture of silicones. However, neither any degree of intimacy of the blend nor any constitution of the individual particles of the internal phase is defined in Claim 1.

[5.3] Moreover, still from the application as filed, in particular from the detailed description of the alleged invention, it can be gathered that:

(a) The single blend may simply be in form of a silicone mixture which can be added to the composition during manufacture […].

(b) It is however preferred that the single blend be in the form of an aqueous emulsion which is added to the composition during manufacture […].

(c) Pre-formed aqueous emulsions of silicone may have advantages in that they themselves may be easier to handle or process than the raw silicone ingredients of the silicone component […]

(d) When the silicone present in the composition is added as an already homogenised mixture, it will be present in the hair treatment composition as a homogeneous mixture of silicones […]. That is, each silicone droplet in the composition will have essentially the same composition and will comprise a mixture (typically a solution) of the two types of silicone which together make up the silicone component of the composition, i.e. first silicone and second silicone […].

[5.4] It follows from the foregoing that:

(a) aqueous emulsions of the silicone ingredients may be used, i.e. may be put together, e.g. in form of a single emulsion, which will then contain a single blend of silicones; or, more particularly,

(b) the silicones may firstly be blended (pre-blending step) and homogenised, then the homogenised pre-blend can be emulsified, in order that each droplet essentially has the same composition. Finally, that pre-homogenised and pre-emulsified single blend in form of an aqueous emulsion is added to the final composition during manufacture.

[5.5] Hence, the term “single blend” of Claim 1 encompasses not only an aqueous emulsion of pre-blended, homogenised and pre-emulsified silicones but also an aqueous emulsion obtained from blending two separate pre-emulsified silicone ingredients into a single aqueous emulsion, the internal phase of which will be made up of the silicone ingredients in their respective droplet form, hence of a single blend of silicones, in controlled particle sizes, uniformly dispersed in the emulsion, suitable to be added to the final composition.

[5.6] The attempt by the appellants to reduce the breadth of the term “single blend” of Claim 1 to a pre-blended, homogenised and pre-emulsified silicone blend, hence to each particle of the emulsion containing a mixture or a solution of the silicones, as illustrated in the description of the application as filed […], amounts to reading additional features and limitations into Claim 1, not explicitly specified as such in Claim 1, but presented as features of a particular embodiment of the alleged invention only in the description, in order to avoid an objection of lack of novelty. This improper claim interpretation is not allowable, as established in the case law (supra) (C.II.B.5.3.4, for instance with reference to T 939/99 and T 681/01).

[5.7] Also, in the present case, although the silicones themselves are polymers, the clarity of the definition at issue relates to the way of blending and emulsifying them, for the purpose of cosmetic preparations, not to their structure, however complex it may be. Cosmetic preparations containing emulsified silicones are well known, as apparent from the prior art cited in the search report, in particular from D3 mentioned in the decision under appeal. In this field, the emulsions and compositions are normally defined by their structure and properties. Hence, already for those reasons, a product-by-process definition is likely to render difficult any comparison with the prior art. In fact, as shown by the file history of the present case, despite the comparative tests provided, the crux of the decision under appeal still lies in the difficulty of assessing novelty over the prior art, e.g. D3.

[5.8] Above all, in the present case, the claimed composition, in particular its internal phase, can be defined structurally by reference to the constitution of each of the droplets, as illustrated in the description of the application as filed […], in order to make clear where the alleged distinctions from the prior art lie. For this very reason Claim 1 must be refused for lack of clarity under A 84, in compliance with the second requirement set by T 150/82.

[5.9] In view of this decision, the further objections under A 84 raised by the Board need not be pursued in the present decision.

[5.10] As apparent from the foregoing, Claim 1 lacks any process features relating to the steps of pre-blending and homogenising the silicones before emulsifying them in form of an aqueous emulsion. Hence, even if a product-by-process definition were the only way of defining the composition, the question whether that lack of definition of essential steps inevitably led to the claimed product, i.e. whether Claim 1 lacks clarity under A 84, would arise. However, still in view of the above decision, this question also need not be dealt with.

[5.11] Therefore, the sole claims request maintained by the appellants is not acceptable. […]

The appeal is dismissed.

If I understand this correctly, whenever the invention has been described via process features although a structural description was possible, the claim has to be refused for lack of clarity, even if the process features as such are perfectly clear. In T 2019/09, Board 3.3.01 had come to the same conclusion not long ago (cf. the corresponding post on this blog).

As a corollary, if such a claim is granted, it should not be possible to raise this objection in an opposition.

Should you wish to download the whole decision, just click here.

The file wrapper can be found here.

T 970/10 – Errare Inquisitorium Est

Sometimes Examiners err. Which does not mean that they necessarily commit a substantial procedural violation when doing so.

Inventive step

[1] The Examining Division (ED) based its reasoning on the disclosure of, inter alia, document D4. However, this document is dated September 2006 which is after the filing date of the present application (26 April 2006). Document D4 is consequently not prior art within the meaning of A 54(2) and hence not relevant to inventive step (A 56); nor is there any suggestion that D4 discloses subject-matter well-known to the skilled person at the filing date of the application. The objection of lack of inventive step was therefore, prima facie, ill-founded. As this was the ground leading to refusal of the application, the decision under appeal has to be set aside. […]

Reimbursement of the appeal fee

[4.1] An incorrect assessment of a document with regard to its date of availability to the public relates to a factual error in respect of the substantive requirements to be met by the “state of the art” in accordance with A 54(2) (which is included in Part II of the EPC, “Substantive Patent Law”), and not to an error in respect of procedural law. Such an error therefore does not amount to a substantial procedural violation.

[4.2] The appellant argued that the citing of documents which are not part of the state of the art under A 54(2) was a procedural violation, as it was contrary to the correct procedure for performing examination under A 94, or for drawing up a search report under R 61.

[4.3] However the board notes that the procedure followed by the ED apparently fully complied with A 94, or A 96 EPC 1973, in that the ED examined whether the European patent application met the requirements of the EPC, determined that the application or the invention to which it relates did not meet the requirements of the EPC, and invited the applicant to file his observations. One of the purposes of the procedure set out in A 94 is in fact to provide the applicant with the opportunity to point out exactly the kind of substantive error committed by the ED.

[4.4] With regard to R 61 (cf. R 44 EPC 1973), this concerns the content of the European search report. If the search report putatively contained an error of fact regarding a document’s date of availability to the public (although in the present case the content of the search report is not relevant as documents D4 and D5 were not mentioned in the European search report) this would also be a substantive rather than a procedural matter.

[4.5] In accordance with R 103(1)(a), “the appeal fee shall be reimbursed ... if such reimbursement is equitable by reason of a substantial procedural violation”. As there was no substantial procedural violation, this request is refused.

Should you wish to download the whole decision, just click here.

The file wrapper can be found here.

NB: A French summary can be found on Le blog du droit européen des brevets.

T 383/11 – No Free Hand

In this case there was a first appeal after the Opposition Division (OD) had maintained the opposed patent in amended form.

The Board found the main request and the first two auxiliary requests not to comply with the requirements of A 123(2) remitted the case for further processing on the basis of the third auxiliary request on file (T 911/06; also reported on this blog).

After remittal the proprietor filed a new main request and four auxiliary requests. Subsequently, in oral proceedings (OPs), the proprietor withdrew the first and second auxiliary requests and renumbered the third and fourth requests as first and second requests. Claim 1 of the second auxiliary request (after renumbering) corresponded to claim 1 of the third auxiliary request that had been the subject of the Board's decision on the first appeal.

The OD finally revoked the patent for lack of novelty.

The proprietor appealed against this second decision and, with the grounds for appeal, submitted a main request and first and second auxiliary requests, which corresponded to those which were the subject of the OD’s second decision.

The second decision of the Board, wherein the Board finally maintained the patent in amended form, contains an interesting passage on the admissibility of the main and first auxiliary requests on file.

[1.1] The Boards of Appeal have derived, in particular from R 79(1), the principle that the proprietor does not have a right to have amendments admitted at any stage of opposition proceedings. At the discretion of the OD or the Board of Appeal, amendments can be refused if they are neither appropriate nor necessary (see case law of the Boards of Appeal, 6^th edition 2010, VII.D.4.1.2, second paragraph).

[1.2] In its decision on the first appeal (T 911/06), the Board found that the main request and first auxiliary request valid at that time offended A 123(2) (see T 911/06 [7-8]) and that the patent as granted and the second auxiliary request valid at that time offended A 83 (see T 911/06 [4,9]).

Considering the third auxiliary request valid at that time, the Board held that the amendments made to claim 1 did not introduce subject-matter that extended beyond the content of the application as filed (see point [10]) and that they restricted the scope of the claim in such a way that the insufficiency of disclosure that had been identified in respect of claim 1 as granted no longer existed (see point [11]). Hence, the Board passed judgement on the then third auxiliary request at least as regards A 123(2) and A 83.

In point [12] of the reasons for the decision, entitled “Remittal to the first instance for further prosecution”, the Board decided to remit the case to the department of first instance for further prosecution, noting in particular that the amendments made according to claim 1 of the third auxiliary request and the attempt to introduce into the proceedings a new document (D8: “Variable speed diesel power generation design issues” by Anthony L. Rogers, UMI Number 9639021, Copyright 1996) had created an entirely new situation that had not been considered in the contested [first] decision. It is evident from this reasoning that for the Board the purpose of the remittal was to allow further prosecution on the basis of the new situation that had been instrumental in bringing it about. In other words, the third auxiliary request was to be the basis for the further prosecution, taking due account of the Board’s judgement on the issues of A 123(2) and A 83.

[1.3] In the post-remittal proceedings before the OD, the proprietor introduced a new main request and a new first auxiliary request (filed as main request and third auxiliary request with letter dated 7 September 2010). These requests correspond to the present main request and first auxiliary request. Claim 1 of each of these two requests has been broadened in scope with respect to claim 1 of the third auxiliary request upon which the remittal had been obtained.

The OD admitted these new requests into the opposition procedure and examined them, finding inter alia that the new main request met the requirements of A 123(2) and A 83 […] and that the new first auxiliary request met the requirements of A 123(2) […]. It is evident from the fact that the OD carried out an examination of the new main request and first auxiliary request for the requirements of A 123(2) and A 83 , that by admitting these new requests, the examination had to be re-opened on issues which had already been judged upon in the first appeal proceedings in respect of the request that led to the remittal.

[1.4] It cannot be the purpose of a remittal to the department of first instance to give the proprietor a free hand to redefine the claimed invention and have the examination start afresh, as that would have the effect of allowing the proprietor to restart the discussion of issues that had been settled by the appeal, even when no new situation has arisen that might justify amending the claims. Furthermore, the overall duration of further opposition and possibly further appeal proceedings after remittal would be likely to severely impair the legitimate interests of the other party and of the general public in having some degree of legal certainty about the existence and scope of the European patent within a reasonable time span. To avoid these problems, the prosecution of the case after remittal must in some way follow on from the situation that existed at the end of the appeal procedure, and that led to the remittal.

In conclusion, the Board holds that in the present case, where after remittal the proprietor filed new requests which required examination to be re-opened on issues that had already been judged upon by the Board of Appeal, without the justification that might be provided, for example, by the proprietor being faced with a new situation, then such requests should be deemed to be inadmissible.

Thus, the Board decided to disregard the appellant’s main request and first auxiliary request.

[1.5] For the sake of completeness, the Board notes that this decision is in line with decision T 796/02, which was relied upon by the opponent in his submission that the filing of the new main request of 7 September 2010 constituted an abuse of procedure.

In that case, the patentee, in a first appeal, had obtained a remittal to the OD on the basis of a request which contained a feature (g) that was defined in relatively narrow terms. Subsequently, in the second proceedings before the OD, the patentee sought to introduce a request in which the feature (g) was more broadly defined (see point [7]). Requests comprising the more generally defined feature (g) had already been filed during the first appeal procedure, but had been withdrawn. The Board held that by withholding the broader requests for tactical reasons, the patentee had deprived the competent Board of an opportunity to decide thereon. Furthermore, the Board held that as a direct result of the patentee’s own tactical choice, the matter of the appeal proceedings had been limited from the broader version of the claims to a much more restricted subject-matter by limiting the feature (g).

The present case differs from that underlying T 796/02 in that during the first appeal the proprietor did not withdraw any requests which correspond to the present main request and first auxiliary request. However, the proprietor did file various requests in preparation for OPs (i.e. the main request and first to seventh auxiliary requests of 9 October 2009). These requests were filed in response to the communication of the Board dated 27 August 2009 in which the Board informed the parties:

“granted claim 1 covers cases where the controllable source is controlled in response to the current of the intermediate DC output, or in response to the voltage (independently from the current) of the controllable source. It is not clear to the board whether these claimed alternatives are sufficiently disclosed in the patent” […]

Thus, the proprietor had at least the opportunity during the first appeal to amend his case as he wished to meet the objection that eventually led to the decision of the Board in the first appeal that the requirement of sufficiency of disclosure (A 83) was not met by claim 1 as granted and that this insufficiency of disclosure no longer existed in claim 1 of the then third auxiliary request (corresponding to the present second auxiliary request) (see T 911/06 [4.4-5,11]).

In this way, the Board considers that as a direct result of the proprietor’s own informed choice, the matter, following the first appeal proceedings, was limited from the broader version of the claims (claim 1 as granted) to a more restricted subject-matter by the limiting features added to claim 1 in the third auxiliary request, on the basis of which remittal was obtained.

The board considers that in such circumstances it would not be justified to admit requests that are broader than the third auxiliary request and that could have been presented before the conclusion of the first appeal proceedings.

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T 1644/07 – A Problematic Extraction

In T 201/83, it was said that “[a]n amendment of a concentration range in a claim for a mixture, such as an alloy, is allowable on the basis of a particular value described in a specific example, provided the skilled man could have readily recognised this value as not so closely associated with the other features of the example as to determine the effect of that embodiment of the invention as a whole in a unique manner and to a significant degree”. The present decision gives an example where this condition was not fulfilled.

All the parties appealed against the maintenance of the opposed patent in amended form.

The decision contains an interesting discussion on whether the main request before the Board complied with the requirements of A 123(2). Claim 1 of this request read (in English translation; my emphasis):

Pulverulent polymerisate which has been post-crosslinked at the surface, which absorbs water or aqueous fluids and which is composed of polymerised, possibly pre-crosslinked monomers containing partially neutralised carboxyl groups, characterised in that the pulverulent polymerisate has been reacted following the post-crosslinking with an Aluminium sulphate of [sic], wherein the concentration of the Aluminium sulphate in the solution lies between 25.86 and 80 wt.%, calculated in anhydrous form (wasserfrei berechnet).

*** Translation of the German original ***

[2] The issue that has been debated in view of A 123(2) concerns the basis for the boundaries of the numerical range of the feature “wherein the concentration of the Aluminium sulphate in the solution lies between 25.86 and 80 wt.%, calculated in anhydrous form” in the characterising part of claim 1.

[2.1] The question to be answered in this context is whether the numerical value calculated from the indications given in Example 20 can be generalised and applied as the lower limit for the concentration range over the whole breadth of the subject-matter of the claim. As a matter of fact, the Examples all dealt with the treatment of some specific polymerisates based on acrylic acid.

[2.2] It is true that the salt concentration of the salt solution used for the post-treatment of the polymerisate is an important parameter, but is only meaningful when seen together with the quantity of solution in relation to the polymerisate. Moreover, the nature of the polymerisate, the nature of the post-crosslinking and its degree of crosslinking as well as the portion of fine particles (Feinteilchen)  and the absorption speed (Aufnahmegeschwindigkeit) of the water, which is related to the latter, play an essential role.

For the sake of completeness, [the Board] refers to the statement in the paragraph bridging pages 2 and 3, according to which the abrasion of polymerisate particles, i.e. fine dust, in particular impairs the ability of a swollen absorber gel to transport further liquid (so-called “gel blocking”). The Board is of the opinion that this holds true in a general way for all such polymerisates, all the more as no explanations contradicting this [view] have been put forth. These statements can be summarised [by saying] that in such a system there is a great number of interactions as a consequence of which the generalisation of such a particular value for the salt concentration over the whole breath of the claims is inadmissible.

[2.3] In other words, it cannot be asserted that the numerical value “25.68 wt.%” in Example 20 is independent of the other boundary conditions mentioned in this Example. As a consequence, the numerical value does not fulfil the criteria that apply to the admissibility of the generalisation of this value and its use as boundary in the independent claims that extend far beyond the Example. Concerning these criteria, [the Board] refers to decision T 201/83.

Therefore, the lower boundary of 25.68 wt.% for the concentration range introduced into claims 1 and 5 has to be considered not to be directly and unambiguously disclosed in the original documents.

[2.4] For this reason alone, the main request […] is not allowable because it violates the requirements of A 123(2) as a result of the new definition of the concentration range. As a consequence, it is not necessary to deal with the arguments concerning the upper boundary of the range.

[2.5] Therefore, the main request is dismissed.

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T 134/10 – Small Change, Big Effect

No reader of the case law of the Boards of appeal can ignore that clarity is not a ground for opposition but that clarity objections may be raised against claims that have been amended during opposition (appeal) proceedings, if the lack of clarity arises from the amendment.

Sometimes even apparently minor amendments can open the door to clarity objections, as the present decision shows.

Here the opponent filed an appeal against the decision to maintain the opposed patent in amended form.

Claim 1 of the main request before the Board was directed to a pearlized cleansing composition for personal care consisting of ingredients (a) to (h). Ingredient (g) was defined to be “optionally, one or more members selected from the group consisting of an effective amount of a pH modifying agent; an effective amount of a viscosity modifying agent; an effective amount of a preservative; fragrance; and a coloring agent”.

The opponent argued that in a claim directed to a composition of matter and drafted with an open wording of the type “composition comprising ...”, additional not specifically listed ingredients could still be comprised in the claimed composition; consequently, the exact assessment of the range of compounds falling under the definition of classes of ingredients which are optional according to the wording of the claim was not relevant for determining which compositions were excluded from the extent of the claim; to the contrary, a closed wording of the type “composition consisting of ...” did not allow the presence of additional not specifically mentioned ingredients; therefore, in such a case the extent of all the classes of components listed, including optional ones, had to be clear in order to enable the skilled person to recognise the limits of the claimed composition. The change from the open wording of claim 1 as granted to the closed wording of claim 1 according to the main request rendered necessary the interpretation of the meaning of the optional ingredient (g); therefore, objections to the clarity of this ingredient (g) arising from the amendments to the granted claim had to be allowed. In claim 1 the optional component (g) included some functionally defined classes of compounds, the meaning of which was not explained in the patent in suit; therefore, it was not clear which range of compounds was encompassed by the wording “an effective amount of a viscosity modifying agent”, which could theoretically include a multitude of very different ingredients having more than one possible functional activity; therefore, it was not possible for the skilled person to assess exactly the extent of the claimed composition.

The patent proprietor argued that the wording of component (g) had remained unchanged with respect to that of the granted claim 1; therefore, its clarity could not be challenged. Moreover, the classes of compounds listed as optional component (g) were well known to the skilled person and some suitable compounds were listed in the description of the patent in suit; therefore, claim 1 was clear.

The Board found the opponent’s arguments more persuasive:

[1.1] Lack of clarity is not itself a ground for opposition and according to the established jurisprudence of the Boards of Appeal of the EPO objections to the clarity of claims are only allowable if they arise in relation to the amendments made (see Case Law of the Boards of Appeal of the EPO, 6th edition, 2010, point VII.D.4.1.4 […], as well as point VII.D.4.2 […]).

In the present case the [opponent] raised inter alia an objection as to the clarity of component (g) of claim 1 which reads: “(g) optionally, one or more members selected from the group consisting of an effective amount of a pH modifying agent; an effective amount of a viscosity modifying agent; an effective amount of a preservative; fragrance; and a coloring agent”. Even though the wording of component (g) has remained identical to that contained in the granted claim 1, the amendment of granted claim 1 from the open wording “A pearlized cleansing composition for personal care comprising ...” into the closed wording “A pearlized cleansing composition for personal care consisting of ...” has rendered, in the [opponent]’s view, the limits of the claim unclear insofar as component (g) is concerned.

Therefore, the objection to the clarity of the claim should be allowed.

[1.2] It is undisputed that the closed wording of claim 1 according to the main request implies that only the components specifically listed in the claim can be contained in the pearlized cleansing composition. Therefore, also the meaning of the optional component (g) is essential for defining the limits of the claimed composition and for knowing which compositions are not encompassed by the wording of the claim.

To the contrary, the granted claim 1, because of its open wording, implied that additional amounts of unspecified ingredients suitable for use in a pearlized cleansing composition could still be included in the claimed composition. Consequently, the extent of the optional component (g) was not important for defining the limits of the claimed composition.

In fact, even though the skilled person would have been uncertain if a certain amount of a compound X could fall under the definition of component (g), the open wording of the claim would have allowed anyway the presence of such a compound X as additional ingredient not specifically listed in the claim and there would have been no doubts upon the exact extent of the subject-matter covered by the claim.

Hence, even though the wording of component (g) has not been modified with respect to that of the granted claim 1, the amendment to the granted claim from an open wording to a closed one has in the present case an influence on the assessment of the extent of the claim insofar as component (g) is concerned.

Therefore, the possible unclarity originates from this amendment and the objection raised by the [opponent] as to the clarity of claim 1 with regard to component (g) is allowable.

[1.3] It is established jurisprudence of the Boards of the Appeal of the EPO that, in order to insure legal certainty, a claim must clearly define the matter for which protection is sought (see T 728/98 [3.1] as well as T 337/95 [2.2-5]).

Insofar as component (g) is concerned, claim 1 according to the main request requires, for example, the optional presence of “an effective amount of a viscosity modifying agent”. Therefore, the principle of legal certainty requires the identification of the meaning of the above mentioned technical feature in order to establish without any doubt the subject-matter covered by the claim.

The description of the patent in suit does not contain any specific definition for the term “viscosity modifying agent” and for its “effective amount” and reports only two examples of viscosity modifiers, sodium chloride and sodium cumene sulphonate, and some preferred concentrations (see paragraph 27).

Moreover, the Board remarks that many ingredients, which are theoretically able to modify the viscosity of a composition, can have in the same composition also other different functions. In fact, as discussed in the oral proceedings, behenyl alcohol, which is component (b) of claim 1, is a pearlizing agent but also increases the viscosity of the composition and sodium chloride, one of the two viscosity modifying agents specifically cited in the patent in suit, is also well known as electrolyte. Furthermore, solvents such as water or ethanol could also be considered as viscosity modifiers because of their solubilising properties.

From the above considerations it results that, in the absence of a specific teaching in the patent in suit which would suggest to the skilled person which compounds should be intended as “viscosity modifying agents” and which not, the labelling of an optional component as a “viscosity modifying agent”, which is essential for establishing the limits of the extent of the claim, is arbitrary and depends on the mental label the user wishes to apply to a specific ingredient (see, for example, T 586/97 [4.1.2.2]).

Therefore, a composition comprising an ingredient X, which would be part of the extent of the claim if it is added in virtue of its ability to modify the viscosity, would fall outside the extent of the claim if the viscosity of the composition is modified by other components and the ingredient X is included for another purpose, for example as an electrolyte.

Consequently, the functionally defined class of compounds “viscosity modifying agent” does not identify clearly and unambiguously a limited range of ingredients.

Moreover, the unclarity of the exact limitation conferred to the claim by the wording of this specific component (g) is increased by the requirement of the claim to comprise “an effective amount” of such an ingredient; in fact, the meaning of “effective amount” is not specified in the patent in suit and, for example, the amount of a component X, necessary for modifying the viscosity of the composition, will depend on the other components present in the composition and could be different for any compound and any composition.

The Board thus concludes that the wording of claim 1, for the reasons mentioned above, does not allow the skilled person to recognize with certainty which compositions are included and which are excluded from the extent of the claim.

Claim 1 thus lacks clarity.

The patent was finally revoked.

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T 1140/09 – Let’s Not Be Too Strict

This is an appeal of the opponents against the maintenance of the opposed patent in amended form.

One of the crucial issues was whether brochure E3 had been made available to the public.

[3.1] Document E3 is a brochure relating to a “Post Identification System”, in short named “PIDSY”, for identifying the person who deposited a bank note at a cash machine after the bank note has been determined as a counterfeit bank note at the central bank. The brochure relates to the own commercial product of [opponent 1] with the purpose of informing potential customers of this latest development. The board was able to ascertain that the original brochure E3, which was submitted during oral proceedings before the board, corresponded to the copy submitted with the notice of opposition. The text of document E3 is uncontested.

[3.2] However, the [patent proprietor] argued that it had not been shown by [opponent 1] “beyond reasonable doubt” that document E3 had been made available to the public.

It is established jurisprudence of the boards of appeal that information is available to the public if only a single member of the public is in a position to gain access to it and understand it, and if this member of the public is under no obligation to maintain secrecy (see Case Law of the Boards of Appeal of the EPO, 6th Edition 2010, section I.C.1.8.8). Whether or not a member of the public has actually accessed the information is irrelevant (see T 84/83 [2.4.2]).

As regards the standard of proof, according to established jurisprudence of the boards of appeal, it is generally the “balance of probabilities” (see Case Law of the Boards of Appeal of the EPO, 6th Edition 2010, section VI.H.4.3). Although earlier decisions have applied the standard “beyond reasonable doubt” or “up to the hilt” for alleged public prior use, the standard of proof for the public availability of commercial brochures applied by the boards, even in their recent decisions, is the less strict standard of “balance of probabilities” (see T 743/89 and T 804/05).

In view of the above the board considers the “balance of probabilities” to be the proper standard of proof to be applied for the question of the public availability of document E3.

However, the board finds for the reasons given below that the evidence presented by [opponent 1] is such that it would also meet the stricter standard of proof as proposed by the [patent proprietor], i.e. that the evidence would also prove the public availability of document E3 beyond reasonable doubt.

[3.3] In the board’s view it is clear that the designation “PIDSY” refers to one and the same system. There is no indication in document E3 that the system described in that document was an improvement of an earlier similar system. Rather, the system is apparently a new development which is intended to achieve compliance with the Council Regulation (EC) No 1338/2001 as well as the ECB framework agreement concerning cash recycling machines.

Furthermore, a version number of the system is indicated neither in document E3 nor in any one of the other documents E5-E13 relating to that document. In each of these documents merely the acronym “PIDSY” is used, sometimes supplemented by an indication that it is a registered trade mark.

Moreover, the indication in documents E10 and E11 that they concern a 4-page document is consistent with the number of pages of E3.

The board is therefore satisfied that the invoices E10 and E11 concern the drawing up and printing, respectively, of the brochure E3.

[3.4] Appellant I alleged that E3 had been distributed to visitors of its booth at CeBIT 2003 and thereby been made available to the public before the priority date of the opposed patent.

CeBIT is well-known to be one of the largest industrial fairs in the area of information technology. It goes without saying that it was in the own interest of [opponent 1] to inform as many potential customers as possible of the new product “PIDSY”, especially at an important industrial fair such as CeBIT 2003 at which many business deals are closed. Appellant I therefore had a strong interest that the brochure E3 would be available at the fair for distribution to visitors of its booth. Hence it would be implausible under these circumstances to assume any obligation of secrecy.

The invoice E11 contains details like colours, format, and paper related to the printing of the brochure E3. Furthermore, it is indicated in E11 that 1650 copies were delivered (“geliefert”), of which 100 to the industrial fair CeBIT (“Messe CeBIT”), and that the costs of transport to that fair would be invoiced separately.

In 2003 CeBIT took place from 12.03.2003 until 19.03.2003. The date 19.03.2003 of the invoice E11 is therefore consistent with the stated delivery to the fair.

In view of the above the board is satisfied that the brochure E3 was made available to the public at CeBIT 2003.

[3.5] Furthermore, in the present case there is a period of about 3 months between the delivery of the brochure E3 to [opponent 1] and the priority date 17.06.2003 of the opposed patent.

It was clearly in the interest of [opponent 1] to disseminate the brochure E3 as widely as possible.

The time following CeBIT 2003 falls into the period mentioned above. The board is convinced that during this period visitors of CeBIT 2003 who were not given a copy of E3 at the booth of [opponent 1] because of the limited number of copies available, received such a copy, e.g. by sending one of the 1550 copies received from the printing company (see invoice E11) by mail or by electronic transmission. Such electronic transmission is consistent with document E5 which shows the printout of an e-mail transmitting during the above period, namely on 11.04.2003, a PDF document comprising the string “BR_PIDSY_mar03_D” also appearing on the last page of the brochure E3 itself.

In view of the above the board is satisfied that the brochure E3 was also sent to potential customers before the priority date of the opposed patent.

[3.6] Since the brochure E3 has been made available to the public before the priority date of the patent in suit, it is regarded as state of the art within the meaning of Article 54(2) EPC 1973.

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