Tuesday, May 30, 2017 T 260/14 - Partial priority for a working example of a generic claim feature

The opposition division did not allow the main request as it considered  the priority application to be prior art pursuant Art. 54(3) EPC and the generically worded claim 1 of the main request to be anticipated by an examplary dental impression material disclosed in the priority application ('poisonous priority'). The proprietor appealed and argued that partial priority should have been recognized, following the principles of G 1/15. In the opponent's view, the claim was not entitled to partial priority and the working example of the priority document (also present in the granted patent) destroyed the novelty of the claim. In the decision , the Board carefully explains how G 1/15 is to be applied, and confirmed partial priority for the part of claim 1 concerning the working example. Consequently, the claim was novel.

Friday, May 19, 2017 T 1852/13 - Essentiality test vs. gold standard

The gold(en) standard?

This case concerns a divisional application in which a feature was removed from claim 1 with respect to claim 1 of the parent application, and whether such removal satisfies the requirements of Art. 76(1) EPC (and equivalently Art. 123(2) if it were to be performed as amendment).

This situation is dealt with by the 'essentiality test' of T 331/87.

This case discusses the essentiality test as it differs across its various versions (English original vs. German translation, original decision vs. guidelines), how it was applied in the recent past, criticism on the test including the criticism raised previously in T 910/03, and most importantly, how it fits into the 'gold standard' established by G 2/10.

After various deliberations, the Board considers the essentiality test to be dead: "Die Kammer ist zum Schluss gelangt, dass der Wesentlichkeitstest nicht mehr zum Einsatz kommen sollte", with one of the reasons being that the original phrasing of 'may not' in T 331/87 leaves open the possibility that all three conditions of the test are satisfied yet that Art. 123(2) is still violated.

As such, the Board considers that the essentiality test cannot replace the gold standard even in its specific application area (removal or replacement of a feature).

Is the essentiality test now finally dead? After T 910/03 it languished but occasionally reappeared.

The Board refrains from referring the matter to the EBoA as it considers such referral not to be decisive in the present case, since according to the Board a same conclusion would be reached using both the essentiality test and the gold standard (being that the removal violates Art. 76(1) EPC).

Friday, March 10, 2017 T 1434/13 - When priority becomes important: D1 is published in the priority year

 

Fig. 2 of D1 (WO2006/095202)

Only in few number cases the right to priority is extensively examined - in general only if there is prior art that has been published in the priority year. In this opposition appeal there was a document on file (D1) that was published in the priority year of the disputed patent. An interesting thing to mention is that document D1 is a PCT application of the same applicant as the owner of the disputed patent. In the opposition proceedings, the Division decided that the patent did not enjoy the right of priority from the two priority documents and, thus, that the claim as granted lacked novelty. In this appeal, the Board repeated the work of the Opposition Division. The Board wrote down an interesting reasoning because different aspects played a role: features were disclosed in the figures, features were not disclosed as a whole in a single embodiment and it seems that essential elements of the priority documents are not the claims (in other words: the priority documents disclose different inventions). 

Sunday, August 23, 2015 T 557/13 - Referral: Mother poisonous for child?

This case refers five questions to the Enlarged Board of Appeal with respect to what is often referred to as partial priority, poisonous divisionals and poisonous priorities. This case has been discussed earlier in this blog, see our post "T 557/13 - Poisonous or nothing wrong?". 
The opposition decision under appeal relates to a patent that is a divisional from  D1 (which is an EP patent enjoying priority from D16). The divisional also claims priority from D16. The Opposition Division decided that claim 1 of the patent of this appeal case does not enjoy the priority from D16 and, thus, the filing date of D1 is the effective date of claim 1. It may be that the opinion of the Opposition Division is now summarized too much, but, according to the Opposition Division is D1 is an Art. 54(3) EPC document because the effective date of D1 is the priority date of D16, and D1 is published after the effective date of claim 1. 
An additional complication in this case is that claim 1 of the divisional application is a so-termed "generic 'OR'-claim" (see point 8.2.2 of this decision for a definition). Subsequently one could argue that a first portion of claim 1 enjoys priority from D16 and D1 is not an Art. 54(3) EPC document for this first portion, while another second portion of claim 1 does not enjoy priority from D1 and, consequently, the novelty of this second portion must be examined over D1 as an Art. 54(3) EPC document. 
Furthermore, the parties to the appeal proceedings had a diverging opinion about "Can a parent application of a divisional application be a novelty destroying Art. 54(3) EPC document?".
The Board of Appeal could not decide on these subjects because, as extensively discussed in the decision, the case law diverges in different directions. Therefore the Board formulated five questions for the Enlarged Board of Appeal. 

Tuesday, May 26, 2015 T 557/13 - Poisonous or nothing wrong?

At the closure of the debate in oral proceedings in T 557/13, the Chairman announced that the Board will refer one or more questions to the Enlarged Board of Appeal in relation to what is often referred to as partial priority, poisonous divisionals and poisonous priorities. The questions are not yet formulated - the decision will be given in writing.  The topic is however of such an interest that we want to post it already now on our blog -- we will come back to the topics once the referral is done. 

Background / Summary of Facts and Submissions

Friday, April 24, 2015 T 1437/10 - Pri, pri, priority

This case concerns an appeal against a decision of the Examining Division to refuse European Patent Application 99943715.5. In its decision, the Examining Division reasoned that the right to priority of the present application was invalid and that, as a consequence, the subject-matter of the main and auxiliary request was not novel over the disclosure of document D1, being published within the priority period.

Of interest is that the priority document is a US provisional application which was filed without claims. At issue in the present appeal is whether the description of the priority document provides a right of priority for the present - relatively broad - independent claim, and in particular, whether later sections of the priority document, which provide various details, limit the general concept described in an earlier section of the priority document.

Summary of Facts and Submissions

(...)

IV. Oral proceedings before the board were held on 12 February 2015.

(...)

IX. The appellant essentially argued as follows:

The priority document was disclosing at least two inventions. The first one being the general design rule for an interleaver of any size N as disclosed in section 2 of the priority document. Other inventions were to be seen in the sections dealing with the details and with the optimisation of the general design rule as disclosed in section 4 and 5 of the priority document, respectively. In section 2 of the priority document, it was explicitly stated that sections 4 and 5 merely were disclosing the details and the optimisation of the broader invention of section 2. Thus, a separate right to priority was existing for the general interleaver design rule of section 2 of the priority document. Hence, claim 1 according to the main request was entitled to the right of priority.

Monday, December 15, 2014 T 571/10 - Partial PRI / OR / ITY

This interesting decision deals with the question of partial priorities. 
In fact, the question was whether the subject-matter of a claim in a divisional application that had the same priority date as the alleged prior art document D9, while also claiming the same priority from the same priority application, was novel over the content of D9 under Art 54(3) EPC. The claim contained a generalized term, parts of which were present in the priority application, and parts of which that were not. 
The board concluded that there were two clearly defined alternative subject-matters, one (a) that was disclosed in the priority document, and the second (b) that was not directly and unambiguously derivable from the priority document and that therefore did not enjoy priority. Since (a) enjoyed priority, D9 did not belong to the state of the art under Art 54(3) EPC and for this subject-matter, D9 was not relevant at all in the analysis of novelty. Alternative (b) did not enjoy priority, hence D9 was considered state of the art under Art 54(3) EPC; however, only for the subject-matter for which the priority of D9 was valid, which was alternative (a). Since (a) and (b) did not overlap, D9 was not considered novelty-destroying for alternative (b) either. 
The board followed the earlier decision T1222/11 and departed from other board of appeal decisions that followed the strict and literal interpretation of the condition "provided that it gives rise to the claiming of a limited number of clearly defined alternative subject-matters" mentioned in G 2/98.

Catchwords:

In a case in which a single priority is claimed for a given application and a number of features of a claim of said application are generalisations of specific features disclosed in the priority document, a partial priority is to be acknowledged, as long as it is possible to conceptually identify, by a comparison of the claimed subject-matter with the disclosure of the priority document, a limited number of clearly defined alternative subject-matters, including among the alternatives the specific embodiments which are directly and unambiguously derivable from the priority document. In order for this condition to be met, it is not necessary that the clearly defined alternative subject-matters are spelt out as such in the application, nor that the word "or" actually occurs (see point 4.5.12). This condition extends to the case of multiple priorities. In that case, a comparison with the disclosure of each of the priority documents is necessary and for each of the clearly defined alternative subject-matters the earliest priority from which the alternative subject-matter is directly and unambiguously derivable is acknowledged (see point 4.5.13).

Summary of Facts and Submissions

I. The appeal lies from the decision of the examining division announced at oral proceedings on 25 September 2009 to refuse European patent application n° 08 165 575.5. The application was filed as a divisional application of European patent application n° 00 951 701.2, which was filed on 4 August 2000, claiming priority from GB 0001621.1 filed on 26 January 2000.

II. The decision was based on claims 1 to 15 of the main request and claims 1 to 14 of the first auxiliary request, both filed during oral proceedings held on 25 September 2009.

Claim 1 of the main request read as follows:

"A pharmaceutical composition comprising (E)-7-[4-(4-fluorophenyl)-6-isopropyl-2-[methyl(methylsulfonyl)amino]pyrimidin-5-yl]-(3R, 5S)-3,5-dihydroxyhept-6-enoic acid or a pharmaceutically acceptable salt thereof as the active ingredient, the composition having a ferric oxide light protective coating; provided that the composition does not comprise the calcium salt of the active ingredient and a tribasic phosphate salt in which the cation is multivalent."

[...]

III. In the decision under appeal, the following documents were cited inter alia:

[...]

D9: WO-A-01/54668 (published on 2 August 2001, filed on 4 August 2000 and claiming priority from GB 0001621.1 filed on 26 January 2000)

IV. The decision of the examining division can be summarised as follows:

a) Claim 1 of the main request did not meet the requirements of Articles 76(1) EPC, since in the earlier application as filed the provision of a composition having a ferric oxide light protective coating could not be read in isolation from the feature defining the presence of an inorganic salt in which the cation is multivalent, which feature was absent from claim 1 of the main request. The latter feature being essential to the definition of the invention, the requirements of Article 84 EPC in combination with Rule 43(1) EPC were also not met.

b) Claim 1 of the first auxiliary request lacked inventive step in view of D1 or D2 as closest prior art, in combination with D3. D1 and D2 disclosed the active ingredient, rosuvastatin, and differed from claim 1 in that they did not disclose the combination of the active ingredient with an inorganic salt in which the cation is multivalent, nor a light protective coating comprising ferric oxide. The problem was identified as the provision of a composition wherein degradation of the active agent under storage conditions was minimised or avoided. The solution was obvious in view of D3 which taught the use of a pharmaceutical composition comprising the active agent in admixture with a water-soluble alkaline substance such as calcium carbonate and further comprising a film coating of "Opadry Yellow" which was a light protective coating comprising ferric oxide.

In addition, the minutes of the oral proceedings at which the decision was taken indicated that it was announced by the chairperson that the disclaimer in claim 1 according to the first auxiliary request was "allowable and established novelty over D9 (Article 54(3) EPC)" (see paragraph bridging pages 1 and 2 in the minutes).

V. The appellant (applicant) filed an appeal against that decision. With the statement setting out the grounds of appeal, the appellant filed four sets of claims as main request and first to third auxiliary requests. A disclaimer was present in claim 1 of all requests.

In that statement of grounds the appellant additionally cited inter alia the following documents:

D13: Extract form a report labelled "Appendix A"

(originally filed with the letter dated 24 July 2009)

D15: Declaration of Joseph Richard Creekmore dated 3 July 2006 (originally filed with the letter dated 13 February 2009)

D15a: "Appendix A" of D15 (originally filed with the letter dated 13 February 2009)

VI. With the letter dated 8 December 2010 the appellant filed eight sets of claims to replace those on file, whereby claim 1 in all requests still contained a disclaimer, and the following document in response to the third party observations which had been filed anonymously with letter dated 30 September 2010:

D17: Supplementary declaration of Richard Creekmore dated 19 November 2010

VII. In a communication sent in preparation for oral proceedings the Board reviewed the submissions of the appellant. In particular, with regard to the disclaimers included in all requests on file, it expressed the preliminary opinion that said disclaimers appeared unnecessary to establish novelty over document D9. With respect to inventive step, the Board pointed out that the available tests did not convincingly demonstrate an effect across the entire scope of the claim.

VIII. In reaction to that communication the appellant filed with letter of 13 May 2014 eight further sets of claims to replace those on file, in which the disclaimer had been deleted and further amendments had been introduced.

IX. Oral proceedings were held on 3 June 2014, during which a set of claims 1 to 12 was submitted as the main request and all previous requests were withdrawn.

Claim 1 of said request read as follows:

"1. The use of a light protective coating containing lactose, hydroxypropyl methyl cellulose, triacetin, titanium dioxide and ferric oxide to reduce the rate of formation of photodegradation products of (E)-7-[4-(4-fluorophenyl)-6-isopropyl-2-[methyl(methylsulfonyl)amino]pyrimidin-5-yl]-(3R, 5S)-3,5-dihydroxyhept-6-enoic acid or a pharmaceutically acceptable salt thereof in a pharmaceutical composition comprising the said compound or salt as the active ingredient, wherein the pharmaceutical composition further comprises an inorganic salt in which the cation is multivalent, and wherein the coating comprises 1 to 3% by weight of the composition."

[...]

Inventive step

Claim 1 involved an inventive step, since the skilled person starting from D2, which was the closest prior art, and wishing to provide stable pharmaceutical compositions, would look to the disclosure of D4 in which the issue of photodegradation was addressed. Nothing in D4 pointed to a coating as a method of reducing photodegradation. Rather, D4 taught that the problem of photodegradation could be solved by using calcium carbonate. On that basis the presence of an inventive step was to be acknowledged.

XI. The appellant requested that the decision under appeal be set aside and that a patent be granted on the basis of the main request filed at oral proceedings before the Board on 3 June 2014.

Reasons for the Decision

[...]

Article 76, Article 84 and Rule 43(1) EPC

2. According to the appealed decision, claim 1 of the main request before the examining division did not meet the requirements of Articles 76(1) EPC, since the feature defining the presence of an inorganic salt in which the cation is multivalent was absent in the claim. Since said feature was seen as an essential feature, the requirements of Article 84 EPC in combination with Rule 43(1) EPC were equally not met.

2.1 Since the disputed feature has been included in claim 1 of the new main request, the corresponding objections have been overcome.

2.2 The Board has no other concern with regard to the requirements of Article 76(1) EPC, Article 84 EPC and Rule 43(1) EPC.

Basis in the application as filed

3. Claim 1 results from a combination of independent claim 2 of the application as filed with dependent claims 13 and 14, which refer to the weight percentage of the coating, and dependent claim 15, which specifies the composition of the coating, together with a change of category from a product claim (a pharmaceutical composition) to a use claim (the use of a light protective coating to reduce the rate of formation of photodegradation products). The specific purpose indicated in the use claim is disclosed in the original description for coatings containing ferric oxides in close association with the coating composition specified in the claim and the weight percentage range thereof (page 6, lines 5 to 12, see in particular the last sentence).

3.1 On that basis, claim 1 of the main request fulfills the requirements of Article 123(2) EPC. The Board has no concerns regarding Article 123(2) EPC for the dependent claims.

Novelty over D9

4. Claim 1 according to both requests on which the decision was based contained the disclaimer: "provided that the composition does not comprise the calcium salt of the active ingredient and a tribasic phosphate salt in which the cation is multivalent". While no analysis related to the presence of the disclaimer and compliance with the requirements of Article 123(2) EPC was made in the decision under appeal, the minutes of the oral proceedings at which the decision was taken indicated that the disclaimer was allowable and established novelty over D9 (see point IV, above). As no disclaimer is present in claim 1 of the main request, the issue of novelty over document D9 needs to be analysed.

4.1 Since the requirements of Article 76(1) EPC, second sentence, have been found to be complied with, the present divisional application shall be deemed to have been filed on the date of filing of the earlier application and shall enjoy any right of priority of the earlier application.

4.2 By virtue of this, document D9, which was published well after the filing date of the present application, does not belong to the state of the art according to Article 54(2) EPC.

4.3 As to Article 54(3) EPC, the present application and document D9 share not only the same filing date, but also the same priority claim, since they claim priority from the same document (see points I and III, above). On that basis, document D9 could belong to the state of the art under Article 54(3) EPC, only insofar as the priority of the present application is not validly claimed, while the priority of D9 is effective.

4.4 The crucial point in order to analyse novelty over D9 resides therefore in the validity of the priority for the present application and for document D9.

4.5 Priority of the present application

4.5.1 The priority document discloses in a paragraph exactly corresponding to a paragraph of the present application (cf. page 4, lines 6 to 13 of the priority document and page 6, lines 5 to 12 of the present application) the use of coatings containing ferric oxides to reduce the rate of formation of photodegradation products of the active agent of a coated pharmaceutical composition in close association with the coating composition specified in claim 1 of the main request and the weight percentage range thereof.

4.5.2 As to the active agent and the salt included in the coated pharmaceutical composition, the priority document discloses a pharmaceutical composition comprising (E)-7-[4-(4-fluorophenyl)-6-isopropyl-2-[methyl(methylsulfonyl)amino]pyrimidin-5-yl]-(3R, 5S)-3,5-dihydroxyhept-6-enoic calcium salt as the active agent and a tribasic phosphate salt in which the cation is multivalent (page 1, lines 3 to 6 and 24 to 25).

4.5.3 Both the active agent and the accompanying salt disclosed in the priority document are specific embodiments with respect to the generic disclosures in claim 1 of the main request, in which the active agent is the substituted dihydroxyhept-6-enoic acid or a pharmaceutically acceptable salt thereof (a generic class including the calcium salt) and the accompanying salt is an inorganic salt in which the cation is multivalent (a generic class including a tribasic phosphate salt in which the cation is multivalent).

4.5.4 While it is clear that priority cannot be acknowledged for the whole scope of the claim in view of the generalisations, the question to be answered is whether and to what extent a partial priority can be acknowledged with respect to the subject-matter disclosed in the priority document. This is to be decided on the basis of the articles of the EPC relevant for priority (Articles 87 to 89, in particular Article 88(2) and (3) EPC, as far as multiple priorities and partial priority are concerned) and of the case law relating to those articles.

4.5.5 With reference to Article 88 EPC and in particular of the situation as the present one in which several alternatives (in the present case the acid, the calcium salt or a different salt for the active agent and a tribasic phosphate salt or a different inorganic salt for the salt) are covered by a claim (the so-called "OR"-claim), decision G 2/98 (OJ EPO 2001, 413) includes a full paragraph related to this subject. In detail, it refers to a memorandum which is part of the historical documentation related to the EPC (Memorandum C drawn by FICPI, M 48/I, Section C, simply referred to as the memorandum in what follows) and is said to express the legislative intent underlying Article 88(2) EPC, second sentence (point 6.4 of the decision) and states the following:

"As regards the "OR"-claim ..., it is held in the memorandum that where a first priority document discloses a feature A, and a second priority document discloses a feature B for use as an alternative to feature A, then a claim directed to A or B can enjoy the first priority for part A of the claim and the second priority for part B of the claim. It is further suggested that these two priorities may also be claimed for a claim directed to C, if the feature C, either in the form of a generic term or formula, or otherwise, encompasses feature A as well as feature B. The use of a generic term or formula in a claim for which multiple priorities are claimed in accordance with Article 88(2) EPC, second sentence, is perfectly acceptable under Articles 87(1) and 88(3) EPC, provided that it gives rise to the claiming of a limited number of clearly defined alternative subject-matters." (point 6.7 in G 2/98)

See FICPI Memorandum

4.5.6 A detailed analysis of G 2/98, of the memorandum and of previous case law was accomplished in T 1222/11 of 4 December 2012 in order to fully understand the conditions for acknowledging the validity of priority when the "OR"-claim is drafted using a generic term or formula (see points 11.1 to 11.8 of the reasons for the decision).

4.5.7 In T 1222/11 it was found that the assessment as to which elements of the "OR"-claim are covered by any of the multiple priority documents can be achieved only by a comparison of the claimed subject-matter of the "OR"-claim with the multiple priority documents, so that the words "gives rise to the claiming of a limited number of clearly defined alternative subject-matters" used in the cited passage of G 2/98 refer to the ability to conceptually identify by said comparison a limited number of clearly defined alternative subject-matters to which the multiple rights of priority claimed can be attributed or not (point 11.5.2 of the decision). That this comparison should give rise to a limited number of clearly defined alternative subject-matters is obviously necessary in order to identify which parts of the claims benefit from the effect of the priority right defined in Article 89 EPC (point 11.5.3 of the decision).

4.5.8 This approach was found to be supported by the memorandum, which according to G 2/98 proved the intent of the legislator concerning the question of multiple priorities. In particular reference was made in T 1222/11 to a statement on page 2 of the memorandum, which reads "It is of course immaterial whether the word "or" actually occurs in the claim, or is implied through the use of a generic term, or otherwise" (point 11.5.4 of the decision) and to three examples provided in the memorandum and referring to the "Broadening of a chemical formula", the "Broadening of range (temperature, pressure, concentration, etc.)" and a method of coating the inner wall of a pipe vs a method of coating the inner wall of bottles or any other hollow bodies (points 11.5.5 to 11.5.7 of the decision).

4.5.9 In particular with reference to the first example in the memorandum, which is the one which comes closer to the present situation, a passage of the memorandum was cited in T 1222/11, which reads: "A first priority document discloses a relatively narrow chemical formula supported by representative examples. A second priority document discloses a broader chemical formula which within its scope includes the narrower chemical formula, and which is supported by additional examples justifying the broader formula. If multiple priorities for one and the same claim are allowed [as it is indeed the case according to Article 88(2) EPC, second sentence], it will suffice to draw up a single claim directed to the broad formula. This claim will then enjoy priority from the first priority date to the extent that the compound in question comes within the scope of the narrow formula, and the second priority for the rest of its scope." This example was found to confirm that the attribution of the partial priorities to the different parts of the claim has to be made by a comparison of the subject-matter of the claim with the disclosure of the priority documents, the clearly defined alternative subject-matters being in this example the narrow formula and the rest of the scope of the claim (point 11.5.5 of the decision).

4.5.10 Moreover, while said analysis referred to the case of multiple priorities, in T 1222/11 it was concluded that there is no reason why the assessment of partial priority for an "OR"-claim should be different depending on whether a single priority or multiple priorities are claimed, nor is there any provision in the EPC which would support a different view (point 11.6 of the decision).

4.5.11 In addition, while the Board in T 1222/11 was well aware of a number of previous decisions of other Boards (T 1877/08 of 23 February 2010, T 476/09 of 21 September 2012, T 1443/05 of 4 July 2008 and T1127/00 of 16 December 2003) which followed a strict and literal interpretation of the condition "provided that it gives rise to the claiming of a limited number of clearly defined alternative subject-matters" mentioned in G 2/98, which was seen as characterising the manner in which the subject-matter of the "OR"-claim must be defined, it found that said condition, when read in its proper context, should be given a different meaning than that attributed to it in those decisions (points 11.4 and 11.5 of the decision of T1222/11).

4.5.12 The present Board fully shares the analysis and the approach of T 1222/11 and, on that basis, comes to the conclusion that in a case such as the present one, in which a single priority is claimed for a given application and a number of features of a claim of said application are generalisations of specific features disclosed in the priority document, a partial priority is to be acknowledged, as long as it is possible to conceptually identify, by a comparison of the claimed subject-matter with the disclosure of the priority document, a limited number of clearly defined alternative subject-matters, including among the alternatives the specific embodiments which are directly and unambiguously derivable from the priority document. In order for this condition to be met, it is not necessary that the clearly defined alternative subject-matters are spelt out as such in the application, nor that the word "or" actually occurs.

4.5.13 This condition clearly extends to the case of multiple priorities. In that case, a comparison with the disclosure of each of the priority documents is necessary and for each of the clearly defined alternative subject-matters the earliest priority from which the alternative subject-matter is directly and unambiguously derivable is acknowledged.

4.5.14 Applying this condition to the present case, one can identify, by comparing the claimed subject-matter with the disclosure of the priority document, two clearly defined alternative subject-matters covered by claim 1 of the main request, namely:

(a) the use of claim 1 of the main request in a pharmaceutical composition comprising the calcium salt of the substituted dihydroxyhept-6-enoic acid as the active ingredient and a tribasic phosphate salt in which the cation is multivalent,

(b) the use of claim 1 of the main request in a pharmaceutical composition comprising the substituted dihydroxyhept-6-enoic acid or a pharmaceutically acceptable salt thereof as the active ingredient and an inorganic salt in which the cation is multivalent, wherein the active ingredient and the inorganic salt are other than the calcium salt of the acid and a tribasic phosphate salt in combination.

4.5.15 The subject-matter of alternative (a) is fully disclosed in the priority document (see points 4.5.1 and 4.5.2, above) and enjoys the claimed priority, while the subject-matter of alternative (b) is not directly and unambiguously derivable from the priority document and does not enjoy a priority right.

4.6 Priority of document D9

4.6.1 Document D9 discloses, in a paragraph exactly corresponding to a paragraph of the priority document (cf. page 4, line 20 - page 5, line 5 of D9 and page 4, lines 6 to 13 of the priority document), the use of coatings containing ferric oxides to reduce the rate of formation of photodegradation products of the active agent of a coated pharmaceutical composition in close association with the coating composition specified in claim 1 of the main request and the weight percentage range thereof.

4.6.2 As to the active agent and the salt included in the coated pharmaceutical composition, D9 discloses a pharmaceutical composition comprising the substituted dihydroxyhept-6-enoic acid or a pharmaceutically acceptable salt thereof as the active agent and a tribasic phosphate salt in which the cation is multivalent (claim 1).

4.6.3 An analysis of the priority of D9 (which is the same as the priority of the application under analysis, see its content in points 4.5.1 and 4.5.2, above) and an application of the same condition as above lead also in this case to the identification of two clearly defined alternative subject-matters, namely:

(a) the use of claim 1 of the main request in a pharmaceutical composition comprising the calcium salt of the substituted dihydroxyhept-6-enoic acid as the active ingredient and a tribasic phosphate salt in which the cation is multivalent,

(b) the use of claim 1 of the main request in a pharmaceutical composition comprising the substituted dihydroxyhept-6-enoic acid or a pharmaceutically acceptable salt thereof other than a calcium salt as the active ingredient and a tribasic phosphate salt in which the cation is multivalent.

4.6.4 Also in this case the subject-matter of alternative (a) is disclosed in the priority document and enjoys the claimed priority, while the subject-matter of alternative (b) is not directly and unambiguously derivable from the priority document and does not enjoy a priority right.

4.7 Conclusions

4.7.1 Once the validity of the priority has been determined both for the application under analysis and for document D9, the relevance of D9 under Article 54(3) EPC can be determined.

4.7.2 For the subject-matter of claim 1 of the main request for which the priority is valid (alternative (a) in paragraph 4.5.14, above), D9 does not belong to the state of the art under Article 54(3) EPC, as it has no valid date prior to the priority date of the application under analysis. For this subject-matter therefore D9 is of no relevance at all in the analysis of novelty.

4.7.3 For the subject-matter of claim 1 of the main request for which the priority is not valid (alternative (b) in paragraph 4.5.14, above), D9 is state of the art under Article 54(3) EPC, however only for the subject-matter for which the priority of D9 is valid (alternative (a) in paragraph 4.6.3, above). However, the subject-matter of alternative (a) of D9 is not novelty destroying for the subject-matter of alternative (b) of claim 1 of the main request, as the former subject-matter has no overlap with the latter.

4.7.4 As no lack of novelty arises, there is no need for a disclaimer with respect to document D9.

Inventive step

5. Closest prior art

[...]

Consequently, D4 is identified as the closest prior art for the subject-matter of claim 1.

5.6 Claim 1 differs from the disclosure of D4 in that:

a) the latter does not disclose the active ingredient of claim 1 but rather compounds which differ in that they comprise a pyran ring.

b) the latter does not disclose the use of a light protective coating, let alone a coating containing lactose, hydroxypropyl methyl cellulose, triacetin, titanium dioxide and ferric oxide, to reduce the rate of formation of photodegradation products of the active agents.

5.6.1 Although in D4 the preparation of tablets which are film coated to about a 3% weight increase is mentioned (examples 3 on page 21 and example 8 on page 23), the composition of the coating is not disclosed and there is no indication in D4 that the coating may play a role in the prevention of photodegradation of the active ingredients, which according to D4 is provided by the stabilizing effect of the pharmaceutically acceptable alkaline earth metal salt (such as calcium carbonate) comprised within the compositions (page 5, lines 8 - 29).

6. Problem solved

6.1 Since a comparison of the method for reducing photodegradation according to D4 with that of the present application is not available to the Board, no particular advantage or improvement can be attributed to the differences identified. In view of this, the problem solved is the provision of a further method for reducing the rate of formation of photodegradation products of an inhibitor of HMG-CoA possessing a hydroxy acid side chain attached to a nitrogen heterocycle.

6.2 That the problem has been solved is demonstrated by documents D13, D15, D15a and D17, filed by the appellant as evidence of the effect on photodegradation of a tablet coating comprising ferric oxide and titanium dioxide. D13 identifies the major photodegradation products of the active ingredient of claim 1 as the epimeric PDP1 and PDP2 (paragraphs 1.6.3.1 and 1.6.4.2). According to test report D15 and the supplementary experimental detail provided as D17, a coating comprising titanium dioxide was compared with a coating comprising ferric oxide and titanium dioxide. The results, displayed in D15a, demonstrate that coatings comprising titanium dioxide and ferric oxide are effective in protecting the active ingredient against photodegradation: at the same percentage of coating weight gain, coatings comprising titanium dioxide and ferric oxide led to less photodegradation products than coatings comprising only titanium dioxide. Although a comparison was not drawn with a composition of the active ingredient in the absence of a coating, it is reasonable to assume that such a composition would not demonstrate a lower rate of formation of photodegradation products than if it were surrounded by a coating comprising only titanium dioxide, thereby allowing the indirect comparison of the rate of formation of photodegradation products of the active ingredient according to claim 1 to the rate which would be observed in the absence of a coating.

7. Obviousness

7.1 None of the prior art documents on file teaches that a reduction of the rate of photodegradation in compounds similar to the active ingredient of claim 1 may be achieved by using a light protective coating containing the ingredients listed. D3, the only document apart from D4 which mentions the light sensitivity of the subject compounds, refers to the possibility of employing coatings which may comprise as ingredients inter alia titanium dioxide and iron oxide (D3, page 9, paragraph 2). However, there is no indication in D3 that using said coating, or a coating of any kind will reduce the rate of formation of photodegradation products in the active ingredients. The skilled person faced with the posed problem, would have therefore no motivation to use a coating as the one indicated in the claim.

7.2 It follows that the subject-matter of claim 1 involves an inventive step.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the department of first instance with the order to grant a patent on the basis of claims 1 to 12 filed during the oral proceedings before the Board and a description yet to be adapted thereto.

This decision has European Case Law Identifier: ECLI:EP:BA:2014:T057110.20140603. The whole decision can be found here. The file wrapper can be found here. Photo by Rkolarsky, obtained via Wikimedia Commons, the free media repository. 

Tuesday, October 07, 2014 T 1779/09 - Escape from the inescapable trap

Although initially appearing as an 'inescapable trap', the appellant has found himself exactly in the situation envisaged in decision G 1/93 in that a feature newly introduced during examination was found by the Board to be limiting but to provide no technical contribution to the claimed invention and therefore to comply with Art. 123(2) and (3) EPC.

Summary of Facts and Submissions [paraphrased]

This case concerns an opposition appeal lodged by the proprietor against the Opposition Division's decision revoking European patent No. 1 171 836 in accordance with Article 101(2) and (3)(b) EPC.

In the contested decision the Opposition Division held that the ground for opposition mentioned in Article 100(c) together with Article 123(2) EPC prejudiced the maintenance of the patent. The Opposition Division concluded that claim 1 of the patent as granted extended beyond the content of the application as filed in view of two amended features, namely the feature "in a document handling program" and the feature "to identify only parts of the document, said parts comprising ... and being used as search terms".

The then appellant requested with the statement of grounds of appeal that the patent be maintained in amended form on the basis of a new main request or one of five new auxiliary requests, all filed with the statement. It further requested that the matter be remitted to the Opposition Division if the requirements of Article 123(2) EPC were met.

The Board summoned the appellant to oral proceedings. In a communication accompanying the summons, the Board summarised the issues likely to be discussed at the oral proceedings. None of the requests appeared to fulfil the requirements of Article 123(2) EPC. Furthermore, the Board stated that it was not fully convinced that any of the requests was compliant with Article 123(3) EPC. It informed the appellant that it was inclined, in case all objections were overcome, to remit the case to the Opposition Division for assessment of novelty and inventive step, in line with the appellant's request.

At the oral proceedings, following a discussion of issues related to Article 123(3) EPC, the appellant replaced all pending requests with a sole request comprising a new claim 1.

Reasons for the Decision

1. The appeal is admissible.

(...)

8.2.3 A further feature of the analysing step of claim 1 is the identification of only a name and/or address, being used as search terms. The term "only" was already contained in claim 1 as granted, albeit in relation to "parts of the document, said parts comprising name, address ...", and therefore, as a feature of the granted claim, cannot be objected to for lack of clarity under Article 84 EPC. However, in both contexts, i.e. in claim 1 as granted and in claim 1 as now amended, the term leaves room for interpretation.

(...)

8.2.4 (...) The appellant nevertheless maintained that, notwithstanding the possible lack of basis of an unambiguous disclosure, claim 1 should be found to comply with Article 123(2) EPC, since the feature at issue was added during examination, did not provide a technical contribution to the subject-matter of the claimed invention and merely limited the protection conferred by the patent. In this respect, the appellant relied on Enlarged Board of Appeal decision G 1/93 (OJ EPO 1994, 541 - Limiting feature/ADVANCED SEMICONDUCTOR PRODUCTS).

8.2.5 In decision G 1/93 the Enlarged Board answered the referred question of law by stating (as Headnote 1, point 1 of the Order) the following principles: "If a European patent as granted contains subject-matter which extends beyond the content of the application as filed in the sense of Article 123(2) EPC and which also limits the scope of protection conferred by the patent, such patent cannot be maintained in opposition proceedings unamended, because the ground for opposition under Article 100(c) EPC prejudices the maintenance of the patent. Nor can it be amended by deleting such limiting subject-matter from the claims, because such amendment would extend the protection conferred, which is prohibited by Article 123(3) EPC. Such a patent can, therefore, only be maintained if there is a basis in the application as filed for replacing such subject-matter without violating Article 123(3) EPC."

8.2.6 The Enlarged Board recognised and accepted that these principles could operate rather harshly against an applicant, who ran the risk of being caught in an inescapable trap and losing everything by amending his application, even if the amendment is limiting the scope of protection (see Reasons 13).

The Enlarged Board, however, went on to consider whether a limiting feature (without basis) necessarily had always to be regarded as subject-matter extending beyond the content of the application as filed. This question had to be answered in the light of the overall purpose of Article 123(2) and (3) EPC to create a fair balance of interests (see Reasons 15).

As emphasised in point 2 of the Enlarged Board's answer (Order) to the referred question (Headnote II), "a feature which has not been disclosed in the application as filed but which has been added to the application during examination and which, without providing a technical contribution to the subject-matter of the claimed invention, merely limits the protection conferred by the patent as granted by excluding protection for part of the subject-matter of the claimed invention as covered by the application as filed, is not to be considered as subject-matter which extends beyond the content of the application as filed within the meaning of Article 123(2) EPC. The ground for opposition under Article 100(c) EPC therefore does not prejudice the maintenance of a European patent which includes such a feature."

(...)

8.2.9 It follows from the above that a limiting feature which generally would not be allowable under Article 123(2) EPC can, under certain conditions, nevertheless be maintained in the claim of an opposed patent in the particular situation addressed in decision G 1/93. It then complies with Article 123(2) EPC by way of a legal fiction.

8.2.10 In the present case, the appellant has found itself exactly in the situation envisaged in decision G 1/93. The term "only" was introduced during the examination proceedings and successfully objected to under Article 100(c) EPC in proceedings before the Opposition Division by the former respondent. Since the Board considers the term to be truly limiting (see above point 8.2.3), its deletion would extend the protection conferred and thereby infringe Article 123(3) EPC.

8.2.11 Consequently it has to be examined whether the limiting feature "only" provides a technical contribution to the subject-matter of the claimed invention. The application describes that the text typed by the user is analysed to find strings corresponding to names and/or addresses, for example, "street, avenue, drive, lane, boulevard,[...] Mr., Mrs., Sir, Frau, Herr, Madam, Madame" or common names. The fact that these identified items (which are then used as search terms) are now limited to only a name and/or address, excluding the possibility of additionally identifying other items to be used as search terms, does not change the solution of identifying common strings corresponding to search terms. In particular the other features of the claimed invention do not have to be changed or adapted due to the now mandatory exclusion of other search terms. The principle of the invention aiming at identifying search terms based on the name and/or address, by finding common strings, does not have to be modified. No program code is needed to exclude other items from the search. Therefore, the exclusive limitation of the search terms to a name and/or address does not influence the solution of the technical problem as understood from the application as originally filed, and hence provides no technical contribution to the claimed invention (see also decision T 384/91, OJ EPO 1995, 745, Headnote II). It merely excludes protection of part of the invention described in the application, thus not giving any unwarranted advantage to the applicant.

8.2.12 The definition of the analysing step in claim 1 of the appellant's sole request is therefore deemed to comply with Article 123(2) EPC.

8.3 Insofar as the definition of the analysing step contains amendments compared with claim 1 as granted (see point 8 above), the Board has no objection under Article 84 or Rule 80 EPC. In particular, it is noted that the limiting feature "performed by a computer program" appears to have been introduced by the appellant in view of prior art cited by the former respondent and is therefore occasioned by a ground for opposition.

9. It follows from the above that independent claim 1 of the appellant's sole request is allowable under Articles 84, 123(2) and (3) and Rule 80 EPC.

(...)

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the department of first instance for further prosecution.

This decision has European Case Law Identifier: ECLI:EP:BA:2014:T177909.20140521. The whole decision can be found here. The file wrapper can be found here. Photo from www.freedigitalphotos.net