Thursday, 7 June 2012

T 620/08 - The Relic

When grounds for opposition are raised for the first time after the time limit for filing oppositions has expired, the Opposition Division (OD) has some discretion not to admit them. However, even then a Board of appeal can later admit this very ground – even if the patent proprietor refuses its approval – if it comes to the conclusion that the OD had not exercised its discretion in a reasonable way.

The present decision not only reminds us of these principles but also has some interesting statements on how to deal with definitions provided in the description of a patent.

[3.1] The [opponent]’s opposition was originally only based on the ground of lack of inventive step. With letter dated 6 July 2007 the opponent filed documents D3-D7 and argued that the subject-matter of the patent in suit lacked novelty in view of documents D3, D4 and D7.

[3.2] The OD decided not to admit the late-filed ground for opposition, since it found that none of the documents D3, D4 or D7 was prima facie relevant for the question of novelty. In the decision under appeal, under the point “Novelty”, the OD set out in detail the reasons why it considered that the subject-matter of the patent in suit was novel over these documents, which then led to its decision not to admit the late-filed ground for opposition. The [opponent] challenged the finding of the OD with regard to document D7. The objection of lack of novelty over documents D3 and D4 was not maintained.

[3.3] The [patent proprietor] argued that since it was not admitted into the proceedings by the OD, the objection of lack of novelty was a fresh ground for opposition which could not be introduced without the agreement of the patentee and cited the decision G 7/95 in support of this argument. Approval was not given.

[3.4] According to the jurisprudence of the Boards of Appeal (see G 10/91 [headnote3] and G 7/95), fresh grounds for opposition may be considered in appeal proceedings only with the approval of the patentee. As can be derived from the Enlarged Board of Appeal’s argumentation G 10/91 [18], the term “fresh ground of opposition” means a ground which is relied upon for the first time in appeal proceedings (T 986/93 [2.3]). This, however, is not the case here. Novelty as a ground for opposition was relied upon and discussed during the opposition proceedings and forms a major part of the decision under appeal (T 986/93 [2.4]).

Furthermore, a Board of Appeal is at least not barred from considering a late-filed ground for opposition which has been disregarded by the OD pursuant to A 114(2), if it is of the opinion that the OD exercised its discretion wrongly in this respect (T 986/93 [headnote]). The procedural decision of an OD to disregard submissions forms an essential element of its decision-making process and as such belongs to the issues subject to review when the final decision of the OD is challenged on its merits (T 986/93 [2.4]).

[3.5] The OD considered that the moiety -NHC(=O)(CH2)(CH2)phenyl present in compounds 54a, 126, 129 or 130 did not fall within the definition of the residue R**(1) of claim 1 of the patent in suit, because the term “amino” was not to be construed broadly such as to encompass the aforementioned moiety.

In its reasoning the OD recognised that, in principle, “the claims should be read giving the words the meaning and scope which they normally have in the relevant art, unless, in particular cases, the description gives the words a special meaning by explicit definition or otherwise”. In this context, the OD also recognised already that paragraph [0055] of the patent in suit might be understood as giving the term “amino” such a special technical meaning.

Thus, the OD was already aware of the fact that, at first glance, lack of novelty over the disclosure of document D7 might be an issue, which, if established, could prejudice the maintenance of the patent in suit. It should thus have admitted this ground for opposition.

Nevertheless, the OD considered that the term “amino” had no such special technical meaning for two main reasons:

Firstly, the broad definition of amino in view of paragraph [0055] of the patent in suit would have made the more specific definitions in claim 1, like -N(C1-C3alkyl)-C(=O)(C1-C3 alkyl), -NH-C(=O)-NH-(C1-C3 alkyl), -NH-C(=O)-N(C1-C3alkyl)-C(=O)-NH(C1-C3 alkyl), C1-C3 alkylamino, etc., redundant, so that the skilled person attempting to make technical sense of the claim would expect that the term “amino” had its normal meaning.

Secondly, the originally filed application was directed to a very broad class of compounds and paragraph [0055] was related to said broad class. The skilled person reading the description and the considerably restricted claims would realise that paragraph [0055] was a “relic” of the originally filed description which did not apply to the restricted set of claims as granted.

[3.6] The OD’s first reason that the skilled person would understand that claim 1 would not contain at the same time a broad definition and a more specific definition encompassed by the broad definition is inconsistent with the facts. Claim 1 of the patent in suit obviously includes other examples for the simultaneous presence of broad and specific (i.e. redundant) terms, for example the term “-CF3” and the term “haloalkyl”. Other examples are the term “carboxy”, which refers to a group “-C(=O)O-”, and “carboxyl”, which refers to a group C(=O)OH, or “sulfonyl”, which refers to a group “-SO2-”, and “-SO2-(C1-C3)”. Thus, for the skilled person redundancy of terms is a feature of the present claims and no reason to attribute to a term a meaning other than that given to it in the patent in suit by explicit definition. Nor does the presence of redundant terms render present claim 1 technically meaningless.

The second reason of the OD is also not supported by the facts. It is not apparent at all from the patent in suit itself that paragraph [0055] should be understood as a “relic” of the original application which does not apply to the claims of the patent in suit. Under the heading “Brief Summary of the Invention” the patent in suit refers to the compounds according to claims 1 and 3. This section is followed by a section with the heading “Detailed Description of the Invention” which starts with a clear “Definition of Terms”, including the term “amino (see paragraphs [0016]-[0054]). Paragraph [0055] refers to substituents of the “above terms”, which the skilled person would understand as applying to all the terms mentioned in paragraphs [0016] to [0054]. There is nothing in the patent in suit indicating that this paragraph was to be ignored. Also, the skilled person wishing to establish what is disclosed in the patent in suit is not required to consider the application as filed or consult the file history of the patent. However, even if the skilled person had done so in the present case, all he would have learned was that the original value Q, which was defined as “one or more rings”, was restricted to a oxo-pyridine ring which could be unsubstituted or substituted by R**(1). This restriction did not concern the definition of the terms as set out in paragraphs [0016]-[0055]. This is also apparent in the fact that neither the applicant nor the Examining Division considered it necessary to restrict or amend the “Definition of Terms”.

[3.7] Thus, in view of the specific meaning of the terms given in the patent in suit, it appears to the Board that there are prima facie reasons for believing that the claimed subject-matter might not be novel over the disclosure of document D7. The Board therefore concludes that the OD did not exercise its discretion in a reasonable way and, therefore, erroneously decided to disregard novelty as ground for opposition. As a consequence, the Board is not barred from considering the issue of lack of novelty over document D7.

[3.8] Concerning novelty of the claimed subject-matter, the Board agrees with the OD’s opinion that the claims should be read giving the words the meaning and scope which they normally have in the relevant art, unless the description gives the words a special meaning by explicit definition. Being a legal document a patent may be its own dictionary. It may define technical terms and determine how a skilled person has to understand a specific word when used in the description or the claims. Thus, the description may give a word or an expression, even an unequivocally clear one, which has a generally accepted meaning, a different meaning than the generally accepted one by explicit definition (T 556/02 [5.3]; T 416/87 [5]; T 500/01 [6]).

[3.9] In the present case, the description of the patent in suit contains an entire section of over two pages with the heading “Definition of terms” at the beginning of the section with the heading “Detailed Description of the Invention” in which the meaning of the terms used in the patent in suit is explicitly defined (paragraphs [0016] to [0055]), including a definition of the terms “alkyl” and “amino”. It is, furthermore, made clear that these definitions apply throughout the complete patent specification, see the expression “the term … as used herein” in all the paragraphs [0016] to [0054]. Alkyl, for example, is defined as C1-C12 straight or branched saturated chain radicals, amino as NH2, both being optionally substituted (paragraphs [0016], [0040] and [0055] of the patent in suit).

It would, therefore, be clear for any skilled reader that in the present case the meaning of any of these terms used in the description or the claims may differ from the meaning the skilled person would normally attribute to them. The Board sees no reason in the present case to disregard these unambiguous and explicit definitions for a proper understanding of the claims and to consider instead the generally accepted definition of alkyl, i.e. a moiety with the formula CnH2n-1 with n being an integer >=1 and amino, i.e. NH2.

Accordingly, in the present case the specific definitions given in the description of the patent in suit will be taken into account in the examination of novelty over document D7.

Please note, however, that not all the Boards share this understanding of the role of definitions as you can see here or here. I hope that sooner or later a Board will refer the question to the Enlarged Board (although I am not convinced that this will happen).

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

To have a look at the file wrapper, click here.