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EP2771468 - Decision of OD in Crispr case (first instance)

You can't slice up a priority right

Today we have the  first instance decision in the opposition against European patent 2771468 having the title "ENGINEERING OF SYSTEMS, METHODS AND OPTIMIZED GUIDE COMPOSITIONS FOR SEQUENCE MANIPULATION" (PCT/US13/74819). The grounds for the decision were published 26 March 2018.

We usually only have  board of appeal decisions, but I'm told this is an important case as it relates to the CRISPR technique of DNA manipulation. It is moreover interesting because of its scale and the issues it raises. There were 9 opponents, 255 documents filed, 72 auxiliary request and a 40-page decision.

The priority documents are US provisionals and each have a number of natural persons as inventors/applicants. I count a total of 12 different natural persons who are applicants to the priority documents in various combinations. It turns out that for some of these persons the priority rights had not been transferred to an applicant of the PCT application, or at least evidence of a transfer acceptable to the OD was not filed.  As a result, the priority claim was objected to the by the opponents. The proprietors have numerous arguments why this objection should not be allowed, but in the end the priority claim is not accepted. Because of the invalid priority, the patent was found not novel.

The underlying problem appears to be hidden in reasons 75-75.1: one of the inventor/applicants of the provisional was not an inventor in the sense of the US law. Accordingly, his successor in title was left of the PCT application, probably to satisfy US law. That one of the persons, who is not an inventor, misses as an applicant on the PCT application now appears to doom this patent in Europe.

Notice of appeal has already been filed, so we'll be interested to see how this case progresses.  

T 1409/16 - Either...or?

If a claim uses "either...or" wording in respect of two (mathematical) inequalities, should this be read in the sense that either the first or the second inequality has to be fulfilled, but not both ("exclusive or"), or should this be interpreted as to imply that the first inequality, the second inequality or both have to be met ("inclusive or") - i.e., corresponding to "and/or" wording? And is the answer to this question affected by the presence of a dependent claim using "conventional" "and/or" wording?
Furthermore, if a certain fraction derived from a prior art polymer has properties that fall within the scope of the claims, does this polymer then make the composition as claimed available to the public?

In this opposition appeal, claim 1 as maintained during proceedings before the Opposition Division reads:

"1. A composition being a laundry treatment composition or component thereof, comprising:
- a substituted cellulose having a degree of substitution, DS, of from 0.01 to 0.99 and a degree of blockiness, DB, such that either DS+DB is of at least 1.00 or DB+2DS-DS^2 is of at least 1.20 and
- a laundry adjunct ingredient."

The Appellant (Opponent 1; party as of right Opponent 2 did not make any submissions) argued that the "either...or" wording had to be clearly read such that only one of the inequalities of claim 1 should be fulfilled (exclusive), but not both - particularly in view of dependent claim 10, wherein explicit "and/or" (inclusive) wording was used (albeit relating to other features). According to the Appellant, such an exclusive "either...or" interpretation of claim 1 would however not be supported by the description, arguably disclosing substituted cellulose compounds fulfilling either none or both (as in the Examples) of the two inequalities according to claim 1.

The Board found that in principle both "exclusive disjunctions" and "inclusive disjunctions" may be expressed by the "either...or" wording as used in claim 1. As such, claim 1 is ambiguous and needs to be construed taking into account the contents of the entire patent in suit. In this regard, the Board considered that particularly the Examples, disclosing compounds fulfilling both inequalities, would make it clear that in fact an inclusive "or" is implied by the claims, meaning that at least one of the inequalities should be met.
The Board held that the "either ... or" wording could only be considered as expressing an exclusive "or" in cases where the two situations referred to are, due to their very nature, mutually exclusive, i.e. incompatible with each other
The Board further found that, citing G 1/92, fractionation - as performed by the Appellant - of a commercially available product in order to arrive at a fraction having properties falling within the scope of the claims, amounts to reverse engineering based on hindsight to reveal extrinsic ("extrinsic" within the meaning of G 1/92) characteristics that point beyond the product per se. Information revealed by following such a deliberate fractionation procedure does not correspond to what can be considered to having been made available to the public by an analysis of the chemical composition.

T 0802/13 - (Un)disclosed combination of features?

This case concerns a successful appeal of a patent proprietor against a decision of the Opposition Division to revoke a patent on the ground of added subject matter.

In the Opposition Division's view, claim 1 of the main request lacked features of the embodiments disclosed in the application as filed in combination with the features added to amended claim 1.

In the BoA's view (see also GL(2017), H-V, 3.2.1), the skilled person is presented with additional technical information if only some of the features of an originally disclosed combination of "inextricably linked" technical features are extracted.This is the case if the original disclosure conveyed the teaching, explicit or implicit, that all the features of that combination had to be present together in order for a specific technical effect to be obtained. In such a situation, claiming only some of those features would present the skilled person with the different (additional) technical information that the omitted features were optional for that specific technical effect (reason 4.3, last paragraph, of the present decision).

However, this was not found to be the case here essentially because those non-claimed  features of the embodiments disclosed were considered to contribute to technical effects different from the technical effect derivable from original claim 1 (and application as originally filed). The BoA considered those non-claimed features exemplary rather than limitative for achieving the desired technical effect. 

Furthermore, in view of the BoA, both the Opposition Division and the respondent did not clearly distinguish between what is covered by a claim from what is disclosed by a claim. A claim can cover much more than what it discloses, thus also embodiments which are not originally disclosed, but this is irrelevant for the evaluation of added subject matter. 

T 1746/15 Proceedings to find evidence of infringement ≠ “infringement proceedings”

In opposition proceedings against the European patent in this case, the Division admitted an intervention on the basis that the patent proprietor had, in Germany, instituted independent evidentiary proceedings (BSV proceedings) against the intervener, whereby a court-appointed inspector is empowered to take evidence of possible infringement. The patent was revoked in opposition for lack of novelty. This decision was appealed by the proprietor, who also  requested that the intervention be found inadmissible.

The patent proprietor argued that BSV proceedings are comparable to "saisie" proceedings in France, which, according to Case Law, do not qualify as "proceedings for infringement" in the meaning of Art. 105(1)(a). The intervener argued that BSV proceedings are not comparable to "saisie" proceedings, but are more akin to Belgian seizure proceedings, which had been held to qualify as proceedings for infringement.

The Board concluded that BSV proceedings are different from both "saisie" proceedings and the Belgian seizure proceedings, but do not qualify as proceedings for infringement because they do not constitute the establishment of an infringement. The intervention was therefore held to be inadmissible. The Board upheld the decision to revoke the patent for lack of novelty.

T 2070/13 - When is routine work an experimental programme?

An experimental programme

Claim 1 in this opposition appeal requires a combination of  a viscoelastant material and an anti-adherent material. A large number of possibilities for the anti-adherent material is claimed, while the anti-adherent property is not very well defined. The Board found that this is too much for the skilled person. Reasons 1.11 discusses where the burden of proof lies in this case. 
"A topical viscoelastic fluid modifying composition for topical application to the skin and hair in the perianal and/or labial areas comprising at least one viscoelastant material and an anti-adherent material, wherein the composition comprises between 0.01% to 25% by weight of the viscoelastant material and between 0.01% and 25% by weight of an anti-adherent material; wherein the viscoelastant material comprises a material selected from the group consisting of enzymes, linked enzymes, alkyl polyglycosides having 8-10 carbon atoms in the alkyl chain, bovine lipid extract surfactant, dextrans and dextran derivative; and wherein the anti-adherent material comprises a material selected from the group consisting of casein, farnesol, flavones, fucans, galactolipid, kininogen, inulin, iridoid glycosides, perlecan, poloxamer 407, sulphated exopolysaccharides, and combinations thereof."

T 1050/12 Public availability, enablement for medicines

Public availability
In this opposition appeal, a discussion took place on when a document was seen as being publically available when made available in a library. The opponent/appellant cited T 834/09 in support of arguments concerning the public availability of documents D3 and D7, The proprietor saw this decision as being divergent from the earlier case law and represented a conceptual shift by promoting the librarian to a member of the public (and not just a person making it available to the puiblic by putting it in the library at a possibly later moment). 

The board  comes to the conclusion that there is evidence on file supporting the conclusion that the document was made available to the public in general (i.e. the users of three libraries) before the priority date. This was the case regardless of whether or not the librarian was a member of the public. Accordingly, even if the board were to come to the conclusion that there was divergent case law as regards the status of a librarian as a member of the public, it would still be able to reach a decision in the present case without the need for an answer on this point from the Enlarged Board of Appeal.

Level of proof
The Board does not want to go into a discussion on which level of proof is most appropriate in this case ('on the balance of probability'  or 'up to the hilt') but applies the concept that what matters is whether or not the deciding body, is - having regard to all evidence and arguments put forward by the parties - convinced that the alleged facts, i.e. the public availability of the documents prior to the priority date, have indeed occurred.  

Enablement for medical use claims.
The proprietor argued that D3's disclosure was not enabling for the claimed medical use, because it only disclosed preliminary experiments for which it lacked many details, and it only hypothesised on a therapeutic effect. Contrary thereto, the patent provided data which made the therapeutic effect plausible. The board notes that enablement of disclosure for medical uses does not require that a therapeutic effect is demonstrated in vivo but rather that it is made plausible (T 609/02, reasons 9). The Board concluded that, while D3 does indeed not show that injected myoblasts as claimed do exert a therapeutic effect in the context of stress urinary incontinence, it nevertheless does provide data and information which render said therapeutic effect plausible. 

Meeting abstracts published in a supplement to a regular volume of a scientific journal found to be publicly available before the priority date of the patent on the basis of library date-stamps and accompanying declarations of the librarians.