T 7/12 – Defend Yourself

In this case the patent proprietor filed an appeal against the revocation of its patent. It complained that the Opposition Division (OD) had not admitted certain auxiliary requests filed during the oral proceedings (OPs).

The patent proprietor requested the appeal fee to be reimbursed; it explained that the two auxiliary requests filed at the OPs before had been filed in reaction to the main request surprisingly being considered to contravene A 123(2). It had been expected that the OD, after its deliberation concerning said auxiliary requests, at least would have asked the patent proprietor whether or not it would like to make further comments but this was not the case. In case the OD had done so, the patent proprietor would have deleted the second independent process claim comprised in these auxiliary requests. It was its intention to explain to the OD the reasons for filing two independent claims, but the OD did not give the patent proprietor a chance to do so.

In response to the Board’s remark that no correction of the minutes had been requested, the patent proprietor made the following statement:

The Board decided to remit the case to the OD for further processing but refused the reimbursement of the appeal fee:

[5] The [patent proprietor’s] request for reimbursement of the appeal fee is considered not to be equitable for the following reasons (see also Case Law, 6th edition 2010, section VII.E.17.3.2):

[5.1] The [patent proprietor] does not argue that the minutes or the decision do not reflect what actually was the course of events at the OPs. To the contrary, on the remark of the Board in its preliminary opinion that it had not requested correction of the minutes, it stated expressly that it did not need to as the minutes correctly reflected what happened.

From these reactions the Board can establish that the admissibility of the two auxiliary requests, filed at the OPs, was at that point challenged by the [opponent] […] on the basis of their late filing as well as for their compliance with R 80 (the decision mentions erroneously A 80).

The minutes do not mention any arguments by the [patent proprietor] on this point, only its explanation of what was the content of the requests, after which follows the statement of the [opponent] that it considered their filing late. After that the minutes state that the proceedings were adjourned for deliberation and resulted in the OD’s statement after the reopening of the proceedings that the requests were not admitted for their (i) lateness, (ii) not being occasioned by a ground of opposition (R 80) and (iii) not fulfilling A 84.

[5.2] The above leads the Board to the conclusion that the [patent proprietor] did have the opportunity to react to the question of admissibility of these requests, but did not use it.

This is confirmed by the statement of the [patent proprietor] that it had expected the OD, after its deliberation, to ask the [patent proprietor] to explain the claim structure, in particular the necessity to file an extra independent claim. It was under the impression that the deliberation served only the purpose of allowing the OD and the other party to study the claims […]. It was then surprised that the deliberation resulted immediately in the requests not being admitted.

[5.3] However, if the [opponent] raises in the discussion the issue of admissibility of requests filed at the OPs, more in particular the issue whether they are related to grounds of opposition (R 80), it is up to the [patent proprietor] to bring forward its arguments in favour of admissibility, including reasons why they do comply with Rule 80 EPC. It cannot expect the OD, which has to stay neutral in such inter partes proceedings, to prompt the [patent proprietor] to make further submissions or to ask – as the [patent proprietor] stated – for further explanations. The OD was therefore not at fault in deciding to deliberate on the admissibility of these requests and pronouncing its conclusion after the deliberation.

[5.4] Moreover, if there is a doubt or a certain expectation on what will be the subject of a deliberation, it is up to the parties to verify this before the OPs are interrupted for deliberation. It can be expected of the parties to actively participate, in particular at the OPs, and to actively safeguard their interests.

In this respect the Board concurs with R 17/11 [19] in which the Enlarged Board of Appeal made it clear that in appeal proceedings it is upon a party to make sure that the points it wishes to raise are actually raised in the proceedings. If it considers something is going to be overlooked, it should raise the issue, if necessary with a formal request, which should then be minuted.

The present Board considers these principles to apply also in proceedings before an OD.

[5.5] In that sense, the [patent proprietor] had the opportunity to raise the necessary points before the OD interrupted the proceedings for deliberation. Contrary to its statement that it did not “have the slightest chance to explain to the OD the motivation to file two independent claims of its own accord”, it did have that chance, but did not use it.

The Board therefore cannot find fault in the manner in which the OD handled the issue of admissibility of the requests in question; the right to be heard has been observed (A 113(1)).

[5.6] In the notice of appeal the [patent proprietor] simply requests “reimbursement of the appeal fee” but does not give any reasoning in support. In the statement of grounds the request is not repeated, nor is a substantiation of that request to be found expressis verbis. However, in point 3.a) of the latter it is argued against the manner in which the discussion was held at the OPs and against the reasoning in the impugned decision that the requests were not occasioned by grounds of opposition. If this is to be considered the substantiation of the request for reimbursement of the appeal fee, in the sense that the [patent proprietor] was not able to react to such reasoning, the Board establishes the following:

[5.7] The decision states with respect to the two auxiliary requests in question that they were late filed and were not based on granted claims. Further, the auxiliary requests introduced a new independent claim in the same category (emphasis added by the Board).

The [patent proprietor] is partly right in that where it concerns claim 1 of these requests, they could not be filed earlier, as the OD had given a positive opinion on the main request, which it only changed as late as at the OPs. The amendment of claim 1, by reintroducing the passage deleted in examination, therefore was clearly occasioned by the ground of opposition of A 100(c), raised by the [opponent] and was – as such – not late filed.

[5.8] However, the requests with this claim 1 also comprised a further independent claim (5, respectively 3) resulting from only the features of claim 9 of the patent as granted, which was dependent on claim 1, but without taking up the features of claim 1 itself.

The conclusion of the OD that this concerned a new independent claim was therefore not without merit.

The case law on introduction of new independent claims in opposition and its compliance with R 80 is quite clear in that this is not necessarily seen as occasioned by grounds of opposition (see Case Law of the Boards of Appeal of the European Patent Office , 6th edition 2010, section VII.D.4.1.3 b)). The non-admittance of the auxiliary requests on this basis is therefore also defendable.

[5.9] As the [patent proprietor] has not furnished any arguments regarding the admissibility of these requests, let alone on the question of R 80, introduced by the [opponent] in the OPs (see above), the impugned decision could be based on merely establishing that fact, without infringing the [patent proprietor’s] right to be heard.

[5.10] In view of the above, the Board concludes that a reimbursement of the appeal fee would not be equitable, the request for reimbursement is therefore refused.

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T 1888/09 – Unity

Now that the Boards of appeal are not competent for the review of invitations to pay additional search fees under the PCT (Rule 40.2 PCT; old-timers will remember the “W” decisions) any more, unity of invention has become a relatively rare issue in Board decisions.

In the present case the application under consideration had been refused for lack of inventive step and unity of invention.

The independent claims on file before the Board read:

1. A method of optical imaging of oesophageal cancer and Barrett’s oesophagus of an animate subject involving administering an optical imaging contrast agent to the subject and generating an optical image of at least a part of said subject to which said contrast agent has distributed; wherein said contrast agent has a molecular weight below 14,000 Daltons and an affinity for an abnormally expressed biological target associated with oesophageal cancer or Barrett’s oesophagus, said biological target being selected from: E-cadherin, CD44, P62/c-myc (HGF receptor), p53 and EGFR/erB-2.

7. Use of the contrast agent as defined in any one of claims 1 to 4 in the manufacture of a diagnostic agent for use in a method of diagnosis of oesophageal cancer and Barrett’s oesophagus involving administration of said diagnostic agent to an animate subject and generation of an image of at least part of said subject.

8. The contrast agent as defined in any one of claims 1 to 4 for use in a method of diagnosis of oesophageal cancer and Barrett’s oesophagus.

The Board examined whether there was unity of invention:

[2.1] When deciding on unity of invention, it is mandatory under A 82 to determine whether or not the inventions or groups of inventions as claimed form a single general inventive concept. According to R 44, the requirement of unity of invention under A 82 shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features, i.e. features which define a contribution which each of the claimed inventions considered as a whole makes over the prior art.

According to the established jurisprudence of the boards of appeal (see e.g. W 11/89 [4.1]), the assessment of unity of invention requires as a precondition an analysis of the technical problem or problems underlying the respective group(s) of invention(s) based on the disclosure of the application as originally filed. As a next step, it has to be determined whether or not the solution to this problem makes a contribution over the prior art.

[2.2] In the present case, the problem underlying the present invention may be defined as the provision of contrast agents for optical imaging of oesophageal cancer or Barrett’s oesophagus in patients […]. This problem was solved by the subject-matter according to present claim 8 comprising five groups of contrast agents, characterised by their affinity to either E-cadherin, CD44, P62/c-myc, p53 or EGFR/erB-2. These five groups of contrasts are a priori linked by (a) a molecular weight of < 14,000 Daltons and (b) by the common effect of having affinity for an abnormally expressed biological target associated with oesophageal cancer or Barrett’s oesophagus. It is therefore possible to formulate a common concept, which can be defined as follows: provision of a contrast agent for optically imaging of oesophageal cancer or Barrett’s oesophagus, wherein said contrast agent has a molecular weight below 14,000 Daltons and an affinity for an abnormally expressed biological target associated with oesophageal cancer or Barrett’s oesophagus. In the absence of any prior art, the thus defined common concept also constitutes a priori a single general inventive concept as required by a 82.

[2.3] The objection of the examining division was, however, directed to lack of unity a posteriori, taking into account the teaching of document D2.

Document D2 discloses optical imaging agents comprising a fluorescent dye conjugated to a short-chain peptide having affinity to somatostatin receptors, VIP receptors or neurotensin receptors, all of which are abnormally expressed in tumoral cells. Said compounds are particularly suitable for the diagnosis or hollow organs including the oesophagus […]. Compared to antibodies the short-chain peptides carrying the fluorescent dye are characterised by advantageous properties such as reduced blood half-live and less allergenic side effects […].

It follows therefrom that the common concept defined in paragraph [2.2] above is not novel in the light of document D2. In this context, it is noted that document D2 does not explicitly mention contrast agents with a molecular mass of below 14,000 Daltons. However, a molecular mass of below 14,000 Daltons is implicitly disclosed therein, as the fluorescent dye is covalently bonded to short-chain peptides […], so that the molecular mass of the resulting product is automatically below 14,000 Daltons. In view of the fact that the above-mentioned common concept is not novel and that it is not possible to formulate an alternative common concept for the invention claimed in claim 8, there is lack of unity of invention.

Alternatively, making reference to R 44, it can be reasoned that in the light of the teaching of document D2, claim 8 does not contain any special technical features, either of the same or the corresponding type, which could make a contribution over the prior art.

The requirements of A 82 are therefore not met.

[2.4] The above reasoning applies mutatis mutandis to the further independent claims, which concern a method claim (claim 1) and a Swiss-type claim (claim 7) involving the same contrast agents.

Further arguments of the appellant

[2.5] Regarding the argument that there was no teaching in document D2 that the somatostatin receptors, VIP receptors or neurotensin receptors were involved in oesophageal cancer, reference is again made to page 3, lines 1-28, according to which these receptors are overexpressed in tumour cells and tumour tissue which can be used for diagnosing hollow organs such as the oesophagus. This means that diagnosis of tumours which are located in the oesophagus constitutes a preferred embodiment of the more general teaching, according to which the receptors mentioned above are used for diagnosing tumours in hollow organs. The fact that document D2 does not contain a specific example describing the diagnosis of the oesophagus is of no consequence, as the description […] contains numerous fluorescent dyes and short-chain peptides which […] are suitable for diagnosing hollow organs including the oesophagus. As a consequence, this argument cannot succeed.

[2.6] In view of this finding, the evaluation of inventive step is not necessary.

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T 209/10 – Singling Out

This is an appeal against the revocation of the opposed patent.

Claim 1 as granted, which was identical to claim 1 of the sole request before the Board, read:

1. The use of raloxifene, or a pharmaceutically acceptable salt thereof, in the manufacture of a medicament for preventing or treating postmenopausal osteoporosis in a postmenopausal woman wherein said medicament is in the form of a tablet or capsule.

The Board had to examine whether this claim contravened A 100(c):

[2.1] Claim 1 of the main request is identical to claim 1 as granted. The assessment of the ground of opposition under A 100(c) is within the framework of the present appeal. In particular, the decision of the opposition division has to be reviewed also in relation to A 100(c), and [opponent 1] already submitted arguments pursuant to A 100(c) with its response to the grounds of appeal […].

[2.2] The patent in suit derives from European patent application 04101615.5, which was filed as a divisional application of European patent application 97200262.0 (parent application), published as EP-A-0781555. The parent application was filed as a divisional application of European patent application 93305860.4 (root application), published as EP-A-0594952. The documents concerning the description and examples as originally filed are identical for the three applications: root (GA), parent (PA) and its divisional (OA) (i.e. the application from which the patent in suit derives). However, the claims as originally filed in the root application (GA) are different from the claims as originally filed in the parent (which are the same as in its divisional application).

It is an undisputable fact that the set of claims of the application as originally filed (OA) does not contain any claim or combination of claims which corresponds to the use in claim 1 of the main request. As a matter of fact claims 1 to 8 of the application as originally filed (OA) related to a pharmaceutical unit dosage form comprising an amount of from 50 to 200 mg of a compound of formula I (generic compound class defined by means of a Markush formula). Moreover, none of the claims of the application as originally filed (OA) specified any medical indication. Thus, the claims of the application as originally filed do not provide any allowable basis under A 123(2) for claim 1 as granted.

Therefore, it has to be investigated whether the description and examples of the application as filed provide a basis for the subject-matter claimed in claim 1 of the main request. Such an investigation corresponds identically to the investigation of the basis in the root (GA) and parent (PA) applications, in view of the identical text of the description and examples.

[2.3] Claim 1 of the main request is a medical use claim in the Swiss-type form, which relates to the use of a single drug, namely raloxifene, which may also be in the form of a pharmaceutically acceptable salt. The particular use to which the drug has to be functionally linked concerns the specific medical indication of the prevention or treatment of postmenopausal osteoporosis, and the particular subgroup of patients is identified as “a postmenopausal woman”. As regards the form in which the medicament is to be administered, it is specified as a tablet or capsule. A body of jurisprudence of the technical boards of appeal identifies the technical elements which have been specified in claim 1 (e.g. identity of the drug, form of the medicament and/or mode of administration, medical indication concerning a disease or ailment, group of patients) as technical features which may confer novelty and/or inventive step on the subject-matter of a medical use claim in the Swiss-type form.

Therefore, it has to be assessed whether the application as originally filed singles out the “invention” specified in claim 1, and whether the claim includes technical information not directly and unambiguously derivable from the application documents as originally filed.

[2.4] The application as originally filed discloses a group of 2-phenyl-3-aroylbenzothiophenes in the prevention of bone loss […]. However, the prevention of bone loss is not a synonym for the prevention of postmenopausal osteoporosis in a postmenopausal woman. As stated on page 1, lines 7-11 of the application as originally filed: “The mechanism of bone loss is not well understood, but in practical effect, the disorder arises from an imbalance in the formation of new healthy bone and the resorption of old bone, skewed toward a net loss of bone tissue”. Claim 1 of the main request does not explicitly reflect the technical effect of “prevention of bone loss”.

Moreover, as stated in […] the application as originally filed, “Unchecked, bone loss can lead to osteoporosis, a major debilitating disease whose prominent feature is the loss of bone mass (decreased density and enlargement of bone spaces) without reduction in bone volume, producing porosity and fragility” (emphasis added). In other words, bone loss is not the only feature of osteoporosis, and thus the prevention of bone loss does not equate to the prevention of osteoporosis.

Further, [… in] the application as originally filed it is stated that: “The inhibition of bone loss contemplated by the present method includes both medical therapeutic and/or prophylactic treatment” (emphasis added). Therefore, this passage does not disclose the preventive treatment of postmenopausal osteoporosis in a postmenopausal woman (which may inter alia address secondary prevention of osteoporosis in an earlier stage of post-menopause, as well as tertiary prevention in a post-menopausal woman already suffering from advanced post-menopausal osteoporosis); it simply discloses the prophylactic treatment which is exclusively linked to the technical effect (not mentioned in claim 1) of inhibition of bone loss.

This understanding […] is in line with the following passage […] of the application as originally filed: “Thus, the current invention provides a method of inhibiting bone loss comprising administering to a human in need of treatment an amount of a compound of formula I that inhibits bone loss but does not significantly affect the primary sex target tissues” (emphasis added).

Moreover, […] “A significant feature of post-menopausal osteoporosis is the large and rapid loss of bone mass due to the cessation of estrogen production by the ovaries” (emphasis added). On the one hand there is a specific form of bone loss encountered in post-menopausal osteoporosis, which is not shared by each patient suffering from bone loss, and on the other hand bone loss is not the only feature of post-menopausal osteoporosis.

[2.5] Therefore, the application as originally filed discloses the technical effect of prevention of bone loss, which is not identical to the prevention of post-menopausal osteoporosis in a post-menopausal woman, as can be inferred from the following passage: “The benzothiophenes of formula I are able to antagonize classical estrogenic responses in primary sex target tissues without significantly reducing bone density when given to intact or estrogen treated animals, and they prevent bone loss in estrogen deficient animals. This dichotomy indicates selective agonist/antagonist actions on specific target cells which would appear to be highly desirable in treatment of menopausal syndrome” […] (emphasis added).

[2.6] In view of the analysis above, the application as originally filed does not specifically disclose the prevention of post-menopausal osteoporosis in a postmenopausal woman.

[2.7] Additionally, if taken in general terms, “Bone loss occurs in a wide range of subjects, including post-menopausal women, patients who have undergone hysterectomy, patients who are undergoing or have undergone long-term administration of corticosteroids, patients suffering from Cushing’s syndrome, and patients having gonadal dysgensis” […] (emphasis added). Therefore, post-menopausal women are selected from a list of several possible options for the patients to be treated.

Even considering that raloxifene is disclosed as the most preferred compound of formula I […], apart from the selection and individualisation of the disease to be treated and the subgroup of patients, a further selection has also taken place in claim 1 of the main request, namely that concerning the form of the medicament as a tablet or capsule. The application as originally filed discloses that the compounds of formula I can be formulated with common excipients, diluents or carriers, “and formed into tablets, capsules, suspensions, powders and the like” […]. “The compounds can also be formulated as elixirs or solutions for convenient oral administration or as solutions appropriate for parenteral administration, for instance by intramuscular, subcutaneous or intravenous routes” […].

Further, […] it is stated: “The particular dosage of a compound of formula I required to treat or inhibit bone loss according to this invention will depend upon the severity of the disease, its route of administration, and related factors that will be decided by the attending physician”. The application as originally filed does not single out tablets and capsules in connection with the prevention and treatment of post-menopausal osteoporosis in a post-menopausal woman. [… I]t is stated that “It is also advantageous to administer such a compound by the oral route to an aging human (e.g. a post-menopausal female or a male showing evidence of bone loss by X-ray analysis)” (emphasis added). First of all, the oral route does not equate with the selection of tablets and capsules since other forms such as solutions and suspensions may also be possible. Moreover, the patient is identified as an aging human and there is no preference for post-menopausal women to be linked to a particular dosage form. The previously cited passage […] of the application as originally filed ends with the following statement […]: “For such purposes the following oral dosage forms are available”. This is followed by a new section with the title “Formulations”, in which several specific examples are disclosed with the proviso that “in the formulations which follow, “Active ingredient” means a compound of formula I” […]. Formulations 2, 3 4 and 5 relate to specific “Raloxifene capsules” in which the raloxifene is in the form of raloxifene hydrochloride. The tablets of formulations 6 and 7 relate to “an active ingredient”, and table 1 on pages 21-22 lists raloxifene as free base and as hydrochloride salt (compounds 20 and 21). The capsules and tablets exemplified are not representative of any possible tablet or capsule containing raloxifene or a pharmaceutically acceptable salt thereof, but illustrate particular tablets and capsules. Additionally, suspensions are also exemplified […]. In the ovarectomized rat model for post-menopausal osteoporosis illustrated in example 1 of the application as originally filed, the rats are treated with raloxifene, administered as the hydrochloride […]. Even if in example 3 of the application as originally filed it is stated […] that raloxifene was administered orally to the ovarectomized rats, there is no basis in examples 1 or 3 for the choice of the form of the medicament as tablet or capsule. As regards example 5, raloxifene was administered as the hydrochloride […] to a particular subgroup of post-menopausal women, namely those aged 45-60, receiving oral capsule formulations […].

Summarising, the examples concerning formulations illustrate specific formulations where the drug is present as hydrochloride salt, or as free base, but do not allow a generalisation to any tablet or any capsule. As regards the examples which concern the animal model for the treatment of post-menopausal osteoporosis, they do not provide any basis for the choice of tablets and capsules as the preferred form of the medicament. Finally, example 5 exclusively concerns the administration of the hydrochloride salt in the form of capsules.

[2.8] Therefore, claim 1 includes technical information which is not directly and unambiguously derivable from the application as originally filed and singles out subject-matter which was not disclosed in an individualised manner in the application as originally filed (this analysis applies mutatis mutandis to the PA and the GA).

Consequently, the main request fails on grounds pursuant to A 100(c) since claim 1 extends beyond the content of the application as originally filed and the parent and root applications as originally filed.

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R 13/12 – For The Trained Only

This petition for review was filed after Board 3.2.08 had dismissed the appeal of the patent proprietor whose patent had been revoked by the Opposition Division (OD) (decision T 36/10).

The petitioner argued that the Board had come to its conclusion that claim 1 lacked novelty over D1 without considering or discussing the key arguments presented by the petitioner on how the skilled person would interpret a certain alloy in document D1.

The Enlarged Board (EBA) found the petition to be admissible and then discussed its allowability:

[2.1] The petitioner made it quite clear during the oral proceedings that the core of the petition was not that it had not had sufficient opportunity to present its case – indeed it had done so at length. The crucial point was that the decision did not consider and discuss the key arguments it had presented. More precisely it could not find in the decision anything that reflected its arguments regarding the non ambiguous disclosure in D1 of the three features and the argument of the self-contradiction contained in the opponent’s argumentation. The Board just said that D1 disclosed the different components.

[2.2] It is undisputed that the right to be heard is not a purely formal right to speak, which would be a travesty of this right, but implies an obligation for the boards of appeal to consider the parties’ argumentation. As a matter of fact this obligation is shaped by the circumstances of each case. This means that the boards have an obligation to discuss in their decisions issues and arguments to the extent that they are relevant for the decision and may disregard irrelevant arguments. In this respect the Boards are not obliged to use specific words or the same wording as that used by the parties and it must be accepted that refutation of arguments may be implicitly inferred from the particular reasoning held by the boards (see R 21/10 [2.4]).

[2.3] In the case in suit, the EBA although having no jurisdiction “ratione legis” nor “ratione materiae” to review the substantive assessments, is satisfied that the decision under review considered the petitioner’s arguments: it summarised the particular key argument submitted by the petitioner in paragraph V and, although not literally, mentioned it again in paragraph 2.2 of the reasons. The decision consists, as very often, of two steps. In paragraph 2.1 the Board explained how, in its view, D1 disclosed all the features of the claimed invention. Then in paragraph 2.3 the Board turned to the petitioner’s argumentation and explained why this argumentation had to be refuted.

[2.4] It is true that to refute the petitioner’s arguments the Board adopted an approach to D1 that was broader than that suggested by the petitioner, in the sense that the Board did not stick to the specific example and relied on a more general teaching of D1. But this had been the core of the discussion, even before the OD, and the petitioner did not contend that it came as a surprise. The EBA does not see here more than an analysis of a document of the prior art made by the Board which is at variance with the interpretation proposed by the petitioner, this analysis rejecting explicitly this interpretation. Indeed, the fact that the Board did not literally reproduce the specific words commonly used regarding the novelty assessment such as “unambiguous disclosure”, or did not explicitly say that there was no contradiction in the opponent’s argumentation as argued by the petitioner does not mean that the Board did not consider the petitioner’s argumentation. A decision of the Boards of Appeal is meant to be read by trained people capable of understanding a reasoning in its substance even if this reasoning does not reproduce literally the words used in the parties’ submissions. This is sufficient to satisfy the right to have its relevant arguments heard in the sense of “considered” (see R 1/08 [2.2, last paragraph and 3.1] about the limit of the EBA’s competence when the complaint overlaps the substantive assessment of inventiveness).

[2.5] Investigating further would involve assessing whether the Board had correctly understood the argumentation and, above all, given the correct answer. The EBA has often stated that the fact that the petitioner does not share the view of the Board of Appeal and does not accept the outcome of the decision is a matter for a review of the merits of the decision (a means of redress which does not exist in the EPC, the decisions of the Boards of Appeal being res judicata). Such a request, therefore, obviously, falls outside the ambit of the petition for review as intended by the legislator (see as example R 4/11).

In this respect the EBA has to remain vigilant and thwart any attempt to blur the frontier between what may clearly be a matter for a violation of the right to be heard under Article 113 and 112a(2)(c), (for instance an evident failure to consider an important factual submission), and anything else presented as a violation of the right to be heard but which actually pertains to the substantive merits of the decision by the Boards of Appeal.

Under no circumstances could an alleged violation of the right to be heard supply the parties with a means to put the EBA in a position where it is expected to check whether a board of appeal understood an argument correctly or drew the right conclusion from it.

In this respect R 6/11 remains an accurate reference, because at least the alleged defects (c) and also (d) overlap the violation of the right to be heard as intended by the petitioner in the present case: under the heading of a violation of the right to be heard and other defect, the petitioner then was also challenging the very reasons of the decision, arguing that the Board of Appeal did not explain, or not enough, or not in a logical sequence, why the petitioner’s arguments were not accepted. In the case in suit, as in R 6/11, the EBA is being expected to check the accuracy of the reasons given with respect to the petitioner’s arguments. (see R 6/11 [IX, 6] dealing with the alleged violation (c) according to which the Board did not explain why it took a different view than the one submitted by the petitioner and also agreed by the adversary party) . […]

The petition for review is rejected as clearly unallowable.

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T 2128/09 – Only The Brave

This is another examination appeal.

Claim 1 of the main request before the Board read:

1. An in vitro process for an identification of inhibitors acting only on protein kinase C-related kinases (PRKs) selected from the group consisting of PRK1, PRK2 and PKNβ, said inhibitors allowing to selectively block the activity of the Androgen Receptor (AR) wherein said process comprises the steps of

• selecting an inhibitor to be tested for its protein kinase C-related kinase inhibitor capacity;
• providing at least two reactions involving at least one of said PRKs and at least the AR acted upon by at least one of said PRKs under physiological conditions, wherein said two reactions comprise the ligand-dependent activation of the AR by RhoA V14;
• adding distinguishable effective amounts of said inhibitor to be tested to said at least two reactions so as to obtain an inhibitor effect of said inhibitor on said PRKs; and
• measuring said measurable effect in dependency upon the distinguishable effective amounts of said inhibitor to be tested so as to ascertain an inhibitory effect of said inhibitor on said PRKs in said reaction. (my emphasis)

The Board found this invention to be insufficiently disclosed:

[1] The Board, exercising its power to examine whether a requirement of the EPC that the examining division regarded as having been met in the examination proceedings (see decision G 10/93), has examined whether the requirements of A 83 are complied with.

[2] Claim 1 refers to an in vitro process for identifying inhibitors acting only on PRKs selected from the group consisting of PRK1, PRK2 and PKNβ. The claimed process consists of the following steps:

• selecting a potential inhibitor,
• providing at least two reactions involving at least one of said PRKs and the androgen receptor (AR), wherein one reaction comprises the ligand-dependent activation of the AR by RhoA V14,
• adding distinguishable amounts of the potential inhibitor to the at least two reactions, and
• measuring an inhibitory affect of the tested, potential inhibitor.

Thus, claim 1, while containing steps that would allow the determination of whether or not a tested inhibitor indeed acts on PRKs selected from the group consisting of PRK1, PRK2 and PKNß, does not contain any step which would allow a skilled person to decide whether or not it acts on these PRKs only or also on other substances, such as other protein kinases.

[3] The appellant referred to Example 2 and argued that it disclosed a process according to claim 1 for identifying inhibitors acting only on PRKs selected from the group consisting of PRK1, PRK2 and PKNβ.

[4] The two substances, referred to as Ro31-8220 and HA 1077, which were tested for their inhibitory effect on PRK1 in the assay of Example 2 […], are acknowledged in the published application (see paragraph [0041] as having only a low specificity for PRKs and showing an inhibitory effect on a number of protein kinases.

[5] The Board seeing that Example 2 describes the steps of the process of claim 1, cannot find any hint in the description of this example that would assist a skilled person in defining the working steps, referred to in point (2) above, that are necessary to identify inhibitors acting only on PRKs selected from the group consisting of PRK1, PRK2 and PKNβ, which working steps are not present in claim 1.

[6] Therefore, the invention according to claim 1 is not disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. Thus, the main request does not meet the requirements of A 83.

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T 1866/08 – Doubts et al

This decision on an examination appeal is the first decision taken in 2013 that I report on this blog. 

The application filed by Yahoo! Inc. concerned the problem of locating illegal copies of digital works in computer networks such as the Internet. The Examining Division (ED) had refused the application for lack of inventive step over document D1.

Claim 1 before the Board read:

A method for operating an intermediary computer to track data requested by a user from a source server over a network, wherein the source server is arranged to communicate with the intermediary computer via a first network communications link, and the intermediary computer is arranged to communicate with the user via a second network communications link, the method comprising the computer-implemented steps of:

receiving (206), at the intermediary computer (104), the requested data from the source server (102); and

supplying (212), via the second network communications link, the requested data from the intermediary computer to the user (106);

characterised in that the method comprises the intermediary computer performing the steps of:

determining (208) whether the requested data includes rights data that indicates an owner of rights to the requested data; and

if the data includes the rights data:

(a) determining whether the source is associated with the owner of rights to the data; and

(b) if the source is not associated with the owner of rights to the requested data, then the intermediary computer not allowing the requested data to be supplied to the user; and

(c) if the source is associated with the owner of rights to the requested data, then the intermediary computer supplying the data to the user and recording (210) that the requested data was supplied.

Independent claims 17 and 20 were directed at a computer system for tracking data and a computer-readable medium carrying sequences of instructions for tacking data, respectively.

The decision contains several interesting passages:

A 84 EPC 1973 and claim construction

[…]

[4] The independent claims specify that the data should “include rights data that indicates an owner of rights in the ... data”, for instance copyright […].

[4.1] The appellant argues that the term “owner of rights” is a “term of art” which the person skilled in the pertinent field of technology would understand […], thereby suggesting it to be a term of the technical arts. The appellant further argues that the skilled person would never consider this term to “in clude a person to whom a content manager has dis tri bu ted some content”.

[4.2] The board disagrees. In the board’s judgment it is primarily a legal issue what the terms “right”, “copy right” and right “ownership” mean and what they possibly exclude or under what conditions. While the board concedes that they are also used by persons skilled in fields of technology, e.g. in the context of what is known as digital rights management, the board rejects the idea that this makes them terms of technical arts with a clear technical meaning. Furthermore, the board notes that rights such as copyright may be transferred - partly or as a whole, and depending on jurisdiction – so that the user requesting and receiving data cannot a priori be excluded as “an owner of rights” in the content. For instance, the board deems it typical that the user receiving the content will also receive the right to use (e.g. display) it, possibly under certain limitations, and thus at least temporarily “own” these rights.

[4.3] According to the claims it is determined whether the source server is “associated with” the rights owner without specifying how this association is expressed or how it would be determined. The board considers that the skilled person knows ways of practising this feature: In the simplest case, one could require that the source server is explicitly mentioned as the owner so as to be “associated with” it. Alternatively, some data structure such as a table could be employed to express a mapping from rights owners to source servers (or vice versa). Or, the data itself might express the association by mentioning both the rights owner and the source server. The board thus accepts this feature as clear, if broad.

[4.4] Accordingly, the board construes the independent claims of the main request as follows: Data in transit from a source server to the user may or may not be flagged for delivery control at an intermediary computer –  by containing rights data or not –, but if it is, data is supplied to the user if and only if the data contains a direct or indirect reference to the source server. This interpretation had been presented in the summons to oral proceedings (OPs) […] and was not challenged by the appellant.

Inventive step

[5] The decision under appeal starts from D1 and makes reference to passages on pages 1, 4 and 9.

[5.1] On page 1, D1 introduces the problem of protecting ownership of digital data on the Internet. Within the solution proposed by D1, however, pages 4 and 9 relate to different specific situations. [… I]t is disclosed that a network client enforces the imprinting of an ID on the requested data before it is made available to the user. The network client is not disclosed as inspecting the data for imprints, let alone to prevent use of the data depending on this inspection. [… T]he description turns to methods for “reading imprinted ID information” as opposed to “methods for imprinting ID information”. In this context, “detector” devices are described […] and it is disclosed that a “proxy server” may be equipped with such a detector. This implies the inspection of data in transit through the network.

[5.2] Accordingly the board agrees with the appellant, that the appropriate starting point within D1 for the analysis is the disclosure on page 9 […]: D1 discloses that a proxy server intercepts data in transit from a source to a user and determines whether data contains an imprinted ID. The board agrees with the ED that the imprinted ID expresses “an owner of rights”, at least on a broad interpretation of that term as justified above.

[5.3] D1 discloses that the proxy server might detect an illegal action […] and suggests that this might be achieved by detecting an imprinted ID […]. The board agrees with the appellant that the detection of an imprinted ID does not, according to D1, imply illegal distribution of content […]. Rather, the skilled person would understand D1 as disclosing that the proxy server of D1 merely checks for likely illegal actions.

[5.4] Moreover, D1 does not disclose the proxy server as interrupting the transmission by not supplying the data to the user. Rather, the skilled person would assume from D1 that the proxy server passes on the data as usual even if an imprinted ID was detected. In the board’s judgment this is implied by the fact that the proxy server, on the one hand, does not prove a copy to be illegal and, on the other hand, should not block a legal da ta transmission. Starting from D1 and trying to improve the capability of the system to trace illegal co pies, the board considers it obvious to impose the stricter rule that any data with an imprinted ID should be deemed illegal anywhere on the network outside the user device associated with the ID. Data with an imprinted ID detected at the proxy server would thus be illegal by definition. In this case, blocking further trans mission of the illegal copy would obviously be an “appropriate measure” which D1 discloses should be taken […].

[5.5] However, the imprinted ID according to D1 does not re pre sent the source server from which data was requested, but the requesting user […]. D1 thus does not disclose that the detector, e.g. in the proxy server, makes reference to the source server when assessing legality of the intercepted transmission, let alone that it forwards intercepted data or not depending on the source server. In the board’s judgment, D1 also does not suggest taking into account the source server to improve its capability of tracing illegal copies or when taking “appropriate measures” if an illegal action is determined.

[6] The decision under appeal […] determines as the difference between more general earlier claim 1 and D1 that “claim 1 determines if the source of the data is associated with the owner and a decision is taken based on that to provide or not the data”.

[7] The decision goes on to state […] that this difference “merely” represents “the steps per formed by a data tracking and transmission system that implements rules about what to do with the traffic and registers th[ese] activities” and that the “task of tracking data traffic is a mere administrative task”. In passing it is argued that these rules and tasks were well-known, for example from the “activity of a librarian registering incoming and outgoing books of the library”. The only technical features of claim 1 were merely “data trans mission and data recording” and these were known from the prior art. The remaining features did not, so the argument, solve a technical problem but an administrative one, namely to “control the distribution of un authorised data” which would belong to the non-technical “domain of the administration of property”. This difference, especially within the context of D1 which is already adapted to “[implement] rules driven by a detect ion event” […], would amount to a mere automation of this administrative task, and if its performance were improved by the automation then only to the extent that any computer automation would cause such improvement, without any further technical effect. This difference could thus not establish an inventive step.

[7.1] The board takes a difference perspective on the invention. The board concedes that the claimed invention has administrative aspects but considers that these cannot be stripped from the technical context in which they occur. The claimed invention relates to the “tracking” and delivery control of “data requested by a user from a source server over a network” in view of that source server. The board fails to see how this would be analogous to, let alone known from, the activity of a librarian “registering incoming and outgoing books of the library”, or why the skilled person trying to improve the system of D1, would turn to the activities of a librarian for help. The board also considers that the claimed invention goes beyond the mere implementation of a non-technical administrative task without any effect beyond the benefits of any computer automation […]. Rather, in the board’s view, the effect of the invention over D1 is tied to a specifically technical situation, namely the request and download of data by a user over a network from a server, as is now clearly claimed. In this respect, the board agrees with the appellant in considering an automated, network-based mechanism to control and authorize the delivery of data as solving a technical problem […].

                      

[7.2] Therefore, the board concludes that in view of the amended claims the decision under appeal has to be set aside. Moreover, since D1 does not disclose or suggest data delivery depending on the source server […], the board concludes that claim 1 is inventive over D1.

Scope of the search

[8] The application had been filed as a divisional application of European application no. 01991123.9, based on the description and the drawings of the latter, parent application but with a new set of claims 1-53 […]. The European search report however merely refers to claims 1-37. In fact, the European search report issued for the present application is substantially identical to the search report issued for the parent application which contained 37 claims. It would therefore seem possible that the present search relied on the results of the search in the parent application.

[9] The board’s conclusion as to inventive step crucially depends on the finding that the source-sensitive automated delivery control of data across a network solves a technical problem.

[9.1] The board notes that the great majority of claims of the parent application, and thus of those which appear to have been searched in the present application, lack the feature of source-sensitive delivery control. Only claims 16, 17, 36 and 37 of the parent application contain this feature. In contrast, all of claims 1-53 originally filed with the present divisional application contain it (esp. independent claims 1, 18 and 37).

[9.2] The board has its doubts whether the feature of delivery control was exhaustively searched for three reasons:

• Due to the fact that this feature was substantially less prominent in the claims of the parent application than in those of the present divisional application, and that the claims of the parent may have been the basis of the search for the divisional.
• because the preamble of all claims - both of the parent and the divisional application - by referring to “tracking data” rather than delivery control may have further detracted from the importance attached to this feature, and
• because the ED considered it to be of no technical relevance anyway […].

[9.3] The board has no basis for determining whether these doubts are in fact justified, in which case a further search should be carried out, or not. Therefore, the board is not in a position to order the grant of a patent based on the present main request and thus exercises its discretion under A 111(1) to remit the case for further prosecution to the ED.

[9.4] In response to the board’s indication that it intended to remit the case, the appellant submitted that a further search was neither necessary nor equitable at this point of the procedure […]. However, when the board decides to remit the case, it is a matter for the ED to determine whether or not to carry out an further search, a determination in which the board cannot interfere. The appellant’s concerns about an additional search will thus have to be directed to the ED, too.

Request for OPs before the ED

[10] According to the principles developed by the boards of appeal (see, for example, G 8/91 [7]; and T 34/90 [headnotes]), the appeal procedure is separate from the examination procedure. It follows that a request for OPs to be held before the ED cannot validly be made during the appeal proceedings. As a consequence, the appellant will have to file a new request for OPs after the procedure will have been resumed by the ED.  

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T 1228/08 – A Step Back

This is an examination appeal.

Independent claims 1 and 9 before the Board read:

1. Apparatus for processing a signal comprising:

a coder (203) for generating at least first and second representations of the signal, the at least first and second representations being different from each other and being deliverable at rates lower than or equal to the required delivery rate of the signal; and

a controller (280, 285) for packaging at least one of the at least first and second representations into a plurality of packets (411, 413) for communication through a packet-switched network, the resulting packet-stream comprising either just packets derived from the first representation or packets derived from the first representation in combination with packets derived from at least one of the other representations depending at least in part on the connection speed associated with the connection (125) over which the packet stream is to be delivered to a given client terminal (130), each packet including at least an indicator and an information content derived from one of the at least first and second representations, the indicator identifying the representation from which the information content is derived, whereby the information content of a packet stream based on the first representation alone is such that the signal recovered therefrom affords the minimum acceptable signal quality.

9. A method for processing a signal comprising

generating at least first and second representations of the signal, the at least first and second representations being different from each other and being deliverable at rates lower than or equal to the required delivery rate of the signal; and

packaging (280, 285) at least one of the at least first and second representations into a plurality of packets (411, 413) for communication through a packet-switched network, the resulting packet-stream comprising either just packets derived from the first representation or packets derived from the first representation in combination with packets derived from at least one of the other representations depending at least in part on the connection speed associated with the connection (125) over which the packet stream is to be delivered to a given client terminal (130), each packet including at least an indicator and an information content derived from one of the at least first and second representations, the indicator identifying the representation from which the information content is derived, whereby the information content of a packet stream based on the first representation alone is such that the signal recovered therefrom affords the minimum acceptable signal quality.

In what follows the Board deals with the question whether document D1 was the right starting point for the inventive step assessment:

[3.2.1] Document D1 discloses a multicast audio tool which uses hierarchical coding. The audio signal to be transmitted is sampled with 16 bits per sample. Each sample is divided into four groups consisting of four bits each. The groups are sent as separate data streams to the destination where they are re-assembled for playback. The data source will always send all four groups but, depending on the receiver’s preferences, some of these groups may not be forwarded to the destination by the local multicast router. The more groups which are received at the destination, the higher the resolution of the re-assembled signal. One factor which is taken into account in the forwarding of groups from the multicast router to the destination is the available bandwidth.

[3.2.2] The method of claim 9 is distinguished from the teaching of D1 in that the packaging of the signal for transmission is performed in dependence on the available connection speed. In D1, all data is packaged and sent irrespective of the connection speed; the local multicast router then controls the forwarding of the packets based on the connection speed but does not influence the packaging itself.

Moreover, the representations which are sent in the method of claim 9 (which correspond to the “groups” in D1) are packaged together as a single data stream and are not sent as separate streams as in D1.

[3.2.3] In the contested decision, the examining division (ED) argued that in cases in which only a single client was expected to access a single file at any one time, the skilled person would see that the multicasting properties of the system of D1 were not required and that the local multicast router would be superfluous. In such cases, it would be obvious to transfer the task of selecting which groups to forward to the client to the server itself, allowing the server to package the data to be transmitted into a single stream. The music-on-demand service described on page 1, line 31 to page 2, line 17 of the present application as filed was cited to show that it was known to send a given version of a musical piece as a single data stream. To transmit just one stream was considered by the ED to be a technological step back from the multicasting system of D1 and therefore not inventive. In other words, it would have been obvious to adapt the multicast system of D1 to provide a system in which data is directly transmitted in a single steam from the server to the destination without the intervention of a multicast router.

[3.2.4] In the statement setting out the grounds of appeal, the appellant argued that if the multicasting properties of the system of D1 were not required then the system of D1 represented the wrong starting point for the assessment of inventive step. The question of how to adapt the system of D1 for use in data transmission when only one client would ever require access to the data would simply not arise because the skilled person would only consider using the system of D1 for multicasting. Thus, to suggest that D1 can be modified to dispose of the multicast router and to package the groups into a single data stream for direct transmission to the receiver was pure hindsight.

[3.2.5] The Board agrees with the appellant’s position. Although D1 discloses the use of hierarchical coding, which is indeed a major aspect of the present invention, the Board considers that this document does not represent a realistic starting point for an attack on inventive step. Following T 439/92, a conscious choice of starting point not only determines the subject-matter serving as a starting point but also defines the framework for further development (see Case Law, I.D.3.5, third paragraph). Thus, using D1 as a starting point would mean that any further development would be carried out in the context of multicasting: it is unrealistic to suggest that, starting from this disclosure, the skilled person would go outside this framework – indeed take a technical step back, as observed by the ED – to develop a non-multicasting system.

Furthermore, as the appellant has pointed out, the packet streams which are constructed in D1 are independent of the connection speed. All of the four-bit groups in D1 are sent individually to the multicast router which then forwards specific groups – again individually – to the receiver. This is what gives the multicast system of D1 the prerequisite flexibility: separate groups are sent in separate data streams so that at the router, individual groups may be selected for forwarding to the destination. To send a single data stream from the data source would be to lose the ability to select certain data building blocks at the router and to consequently lose the ability to adapt the data transmission to changing network conditions. In view of the fact that the whole idea in D1 is to allow maximum flexibility with regard to the data packets which are retrieved by the user, the Board is of the view that it would be counter-intuitive to provide a single stream in D1.

[3.2.6] For these reasons, the Board is of the opinion that the method of claim 9, and correspondingly also the apparatus of claim 1, cannot be derived in an obvious manner when starting from the disclosure of document D1.

The Board found the claims to be inventive over the prior art described in the application.

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T 124/09 – Let Him Speak

This is an appeal against the revocation of the opposed patent.

The decision contains an interesting passage on oral submissions by an accompanying person during oral proceedings (OPs):

[2.1] In a letter dated 15 October 2012, the appellant’s representative, Mr Heimdal, requested permission for Mr Malmqvist, who would accompany Mr Heimdal to the OPs, to make oral submissions.

[2.2] During the course of the OPs, [opponent I] requested that Mr Malmqvist should not be allowed to speak. This request was made – somewhat inappropriately – after the debate concerning the admissibility of the main request [...] had been concluded, the case for the appellant having been presented solely by Mr Malmqvist. Apart from the fact that Mr Malmqvist was not an authorised representative, no reasons were provided in support of this request.

[2.3] In decision G 4/95, the Enlarged Board of Appeal decided that

“During OPs under A 116 in the context of opposition or opposition appeal proceedings, a person accompanying the professional representative of a party may be allowed to make oral submissions on specific legal or technical issues on behalf of that party, otherwise than under A 117, in addition to the complete presentation of the party’s case by the professional representative” (see Headnote I).

In the present case, it was in fact Mr Malmqvist who presented the complete case for the appellant, Mr Heimdal only interjecting where necessary. However, the Board saw no reason to object to this arrangement as long as the presentation of the case was made under the continued responsibility and control of the professional representative Mr Heimdal. The Board therefore allowed Mr Malmqvist to continue with his oral submissions.

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T 1798/08 – No Disguise

Both the patent proprietor and the opponent appealed the decision of the Opposition Division to maintain the opposed patent in amended form.

The Board found the main request on file to violate A 123(2) and then went on to examine the first auxiliary request claim 1 of which read:

A visual prosthesis, comprising:

a) means for perceiving a visual image, said means producing a visual signal output in response thereto;

b) retinal tissue stimulation means comprising an electrode array (22) capable of stimulating retinal cells to produce phosphenes in a pattern to stimulate vision, said electrode array (22) adapted to be operatively attached to a retina of a user; and

c) visual signal communication means for transmitting said visual signal output to said retinal tissue stimulation means, comprising a primary coil (16) for wirelessly transmitting a radio frequency encoded image signal and a secondary coil (18) for receiving the radio frequency encoded image signal transmitted via the primary coil (16), wherein

I. the electrode array (22) and the secondary coil are in communication via a decoding and demultiplexing circuit block (20) to which the radio frequency encoded image signal is passed from the secondary coil (18) and which communicates said signal to the electrode array (22) and wherein

II. a) the secondary coil (18) and the decoding and demultiplexing circuit block (20) are suitable to be located on the body of the user outside a wall of the sclera and attached to the sclera, or

b) the decoding and demultiplexing circuit block (20) is suitable to be located on the body of the user outside a wall of the sclera and attached to the sclera and the secondary coil (18) is suitable to be located implanted in the eye behind the iris.

In what follows the Board examines the question whether this subject-matter is excluded from patentability.

[3.2] Although all claims are directed to a visual prosthesis, i.e. an apparatus, they were objected to under A 53(c) as relating to a surgical method. The features “suitable to be located on the body of the user outside a wall of the sclera and attached to the sclera”, “suitable to be located on the body of the user outside a wall of the sclera and attached to the sclera” and “suitable to be located implanted in the eye behind the iris” in part II of feature c) of claim 1 were regarded as relating to a method for treatment of the human or animal body by surgery, thus transforming the claim into a “disguised” method claim, even though it was notionally directed to a device.

The Board dismisses this objection for the following reasons.

A 53(c), second sentence, specifies that the provision does not apply to products, e.g. substances and compositions, for use in the methods falling under the exception clause. In addition to substances and compositions, the claim category “products” includes apparatus. Accordingly, the provisions of A 53(c) do not normally apply to apparatus claims.

The fact that some features of the claimed apparatus are functionally defined in relation to the body of the patient does not itself transform the apparatus claim into a method claim (T 712/93 [3]; T 1695/07 [17]). It is true that the actual implantation of components of the prosthesis would constitute a surgical intervention in the patient’s body, but this is not what is claimed in claim 1. The claim merely defines that certain components of the prosthesis are “suitable to be located” at various locations in the patient’s body. Such a definition does not except the claimed apparatus from patentability under A 53(c).

The reasoning of T 775/97 [2.6] is not applicable to the present case, as the underlying situation is entirely different. Claim 29 of the main request at issue in that case related to the use of two tubes for the manufacture of a device for use in a surgical method. Since said device was assembled inside the body by a surgical method, it was found to constitute a surgical treatment. In the present case, however, the claim is not directed to a use but to an apparatus and does not refer to any manufacturing steps. No surgical step is needed to make any of the components of the claimed prosthesis. The present claim is comparable to the device claims of the auxiliary request in decision T 775/97 [3.1] which were found not to fall under the exclusion clause of A 52(4) EPC 1973.

The reasoning of T 82/93 [1.5-5] is not applicable to the present situation either. In that case the claim objected to was directed to a method of operating a pacer including a number of features which were physical entities and a number of features defining physical activities or actions (referred to as a “hybrid claim”). At least one of these actions, viz. the use of certain sensed parameters to control the pacer rate, was considered to constitute a method of treatment of the human body by therapy, resulting in the claim defining subject-matter excluded from patentability under A 52(4) EPC 1973. The present case is different in that claim 1 is not directed to a method and in that it does not comprise any features defining physical activities or actions, still less any steps defining a surgical or therapeutic treatment of the human body.

G 5/83 deals with claims directed to the use of a substance or composition for the treatment of the human or animal body and is thus also of no relevance in the present context.

The statement cited by the appellant opponent from G 1/04 [6.2.1] that a claim falls under the prohibition of A 53(c) “if it includes at least one feature defining a physical activity or action that constitutes a method step for treatment of the human or animal body by surgery or therapy” explicitly refers to method claims, and not to device claims as in the present case. Furthermore, as explained above, claim 1 does not include any such method step for treatment.

It follows that claim 1 of auxiliary request 1 does not fall under the exception clause of A 53(c).

The issue of exception from patentability has to be decided on the basis of the given wording of the claim as indicated above (possibly taking into consideration additional information provided in the description, which was not necessary in the case at issue). Any possibly necessary interpretation of certain features of the claim (i.e. suitability of components to be located on or attached to parts of the body) for the assessment of novelty should not play a role in the decision as to whether or not a given claim falls under the exception clause, since novelty is a separate and independent patentability requirement (“Case Law”, 6^th ed. 2010, I.A.1.2).

Also the issue of possible patent infringement, i.e. the question of whether a surgeon implanting components of the claimed device might be confronted with the problem of patent infringement and thus be hampered in his freedom when treating his patients, has to be left aside in this decision.

According to opinion G 2/88 [3.3] a distinction is to be made between the protection conferred by a patent as determined by the claims according to A 69(1) and the rights conferred on the patent owner in the designated Contracting States according to A 64. The rights conferred on the proprietor of a European patent under A 64(1) “are the legal rights which the law of a designated Contracting State may confer upon the proprietor, for example, as regards what acts of third parties constitute infringement of the patent, and as regards the remedies which are available in respect of any infringement”, and “the “rights conferred” by a patent are a matter solely for the designated Contracting States” [emphasis added].

This is confirmed in G 1/07 [3.2.3.2], where it is stated that “any issues of infringement ultimately depend on the construction of the applicable national laws”, and that there is “no term in A 53(c) which would allow concluding that hampering of the practitioner’s freedom is a prerequisite for the exclusion to apply in the individual case considered. The only condition defined in A 53(c) for a claim to be excluded from patentability is that it contains subject-matter being a method for treatment of the human or animal body by surgery or therapy or a diagnostic method. If so, it is excluded from patentability and it is then irrelevant whether in the individual situation under consideration a medical practitioner would or could infringe the claim” [emphasis added]. Since the issue of possible infringement by a medical practitioner is not decisive in case of a claim directed to a method, this must a fortiori be the case for a claim to an apparatus, such as a visual prosthesis. It is well established that product protection is available for medically-related products even though it may hamper the medical practitioner’s freedom to operate.

NB: There are other interesting items in the decision, such as the request for a legal hint by the Board.

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