Friday, 18 January 2019

T 1085/13 - Purity of a compound is not the inevitable result of a prior art preparation method


If the prior art already discloses a (low-molecular) chemical compound having a certain degree of purity and a method for its manufacture, does this imply an implicit disclosure of the same compound having a higher purity - thus prohibiting later claims to the compound defined by a certain higher degree of purity?

Previously, the Examining Division had refused the sole request of the Applicant, pertaining to a chemical compound defined in claim 1 as "Amorphous Lercanidipine Hydrochloride having a purity of at least 99.5% determined by HPLC analysis and containing less than 0.5% of crystalline Lercanidipine Hydrochloride". Relying inter alia on T 990/96, the Examining Division argued that the disclosure of amorphous Lercanidipine Hydrochloride ("LH") and its manufacture in prior art document D1 already had made available this compound to the public in the sense of Article 54 EPC in all desired grades of purity, and the claimed degree of purity could therefore not render the claims novel.

Departing from T 990/96 and subsequent cases including T 0728/98, the present Board of Appeal held that, in line with in particular decisions G 2/88 and G 2/10, in order to conclude a lack of novelty, there must be at least an implicit disclosure in the state of the art of subject matter falling within the claimed scope. Such an implicit disclosure would mean no more than the clear and unambiguous consequence of what is explicitly mentioned in the prior art. Thus, the skilled person, using his common general knowledge, would understand a feature as implicitly disclosed in a prior-art disclosure only if it is the clear and unambiguous consequence, and hence the inevitable result of what is explicitly derivable from said prior art disclosure.

In the present case, it was demonstrated (in a report filed during examination) that a purity falling within the claimed range is not the inevitable result, and thus not an implicit feature, of the preparation method taught in D1. The question whether (further) purification methods required to reach the claimed purity were within the common general knowledge of those skilled in the art was not considered relevant to novelty, but rather a matter to be considered in the assessment of inventive step.

The Board found that having regard to both the common general knowledge and the state of the art, no purification techniques were available prompting the skilled person to solve the technical problem of providing amorphous LH having a higher purity. Accordingly, amorphous LH having the claimed degree of purity was found to be novel and inventive.

Monday, 14 January 2019

T 2707/16 - waiting, waiting and still waiting


This examination appeal was lodged after exceptionally lengthy examination proceedings. 
The patent application in suit was filed on 30 November 2001 with a priority date of 30 November 2000. The European search report was transmitted to the applicant almost 5,5 years after the priority date. After timely filing the request of examination, the applicant receives the first communication of the Examining Division on 7 April 2008 to which he timely replies in August 2008. After more than 7 years, on 7 January 2016, the applicant receives the second communication (summons to Oral Proceedings) from the Examining Division! In the Oral Proceedings the Examining Division refuses the application for lack of inventive step (Art. 56, EPC).  
In the grounds of appeal the appellant requested that the application be granted  on the basis of a sole request and that the appeal fee be reimbursed.
At the end of oral appeal proceedings held on 25 April 2018, the BoA remits the case to the department of first instance for further prosecution.
In order to establish whether the appeal fee could be reimbursed under Rule 103(1), EPC, the BoA extensively argues (see reasons 16 to 34 of the decision), even by making reference, in line with the appellant, to the case law of the European Court of the Human Rights (ECHR), on whether the delay in the first-instance proceedings amounts to a substantial procedural violation according to Rule 103(1), EPC. The BoA concludes that indeed such a delay can be considered a substantial procedural violation (in line with T 823/11 but deviating from T 1824/15). However, the BoA considers the reimbursement of the appeal fee in view of the unreasonable delay not equitable because the applicant did not make clear by any action that he did not tacitly agree with the stagnation of the proceedings (see reasons 35 and 36).
Thus the BoA refuses the request of the appellant for the reimbursement of the appeal fee.

To date the proceedings are still pending and the applicant is requested to pay renewal fees for the 18th year to the EPO! 

Wednesday, 9 January 2019

T 384/15 - Intervention another company from the same group as the opponent: admissible?


Opposition appeal proceedings were pending with a single opponent, Santarelli SA. Early during the appeal proceedings, a first intervention was filed by a first assumed infringer, Bose Gmbh. At a later moment during ther appeal proceedings, a second intervention was filed by a second assumed infringer, Bose Limited. The proprietor objected to the interventions by Bose Gmbh and Bose Limited as both belong to the same group as Santarelli SA, and submitted that these two intervenors were not third parties and that the filed interventions were abuse of law, as a consequence of which the interventions (as well as the opposition) should be considered inadmissible. The Board did not agree. The Board and that the interveners are "third parties", and also that the invoking Article 105 EPC had not been an attempt by the opponent and/or interveners to circumvent the law by abuse of process. The Board held the opposition and both interventions admissible.

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