Wednesday, May 11, 2016 T 1673/11 - Swiss type claim in opposition

Change categories?

Can a patent proprietor change a Swiss type claim to a purpose-limited product claim during opposition proceedings? The board finds that the Swiss type claim as granted has a narrower scope than the purpose-limited product claim; changing categories thus infringes A.123(3).

Claim 1 as granted reads:
"The use of human acid alpha glucosidase in the manufacture of a medicament for the treatment of infantile Pompe's disease, wherein the human acid alpha glucosidase is in the 100 to 110 kD form, wherein the medicament is to be administered intravenously, and wherein the treatment is to be continued for at least 4 weeks."

Claim 1 of the main request held allowable by the opposition division reads:
"Human acid alpha glucosidase in the 100 to 110 kD form, for use in the treatment of infantile Pompe's disease, wherein the human acid alpha glucosidase is to be administered intravenously, and wherein the treatment is to be continued for at least 4 weeks."

According to the board, a human acid alpha glucosidase provided with instructions for the use in a treatment other than that of infantile Pompe's disease, would fall under the scope of the purpose-limited product claim if it is used for infantile Pompe's disease.

Friday, October 09, 2015 T 1021/11 - Two independent claims for same medical use

In this examination appeal, the main request comprises two independent claims for the same medical indication of the same substance, one claim drafted in the Swiss-type format (use of substance X for the manufacture of a medicament for the treatment of disease Y) and the other claim following the provisions in Article 54(5) EPC (substance X for use in the treatment of disease Y).

In a telephone conversation with the rapporteur, the applicant was invited to comment on the presence of two independent claims for the same medical use in the same set of claims in this request.

The applicant commented that he has a legitimate interest to pursue both claim types in one set because determining the scope of those claims in potential infringement proceedings was a matter for national courts, as confirmed in decision G 02/08. 

In addition, both claim types were deemed allowable by the applicant since the patent application was pending when G 02/08 was issued (and thus the Swiss-type format was allowable) while the transitional provisions concerning the revised Convention Article 54(5) EPC applied to the present application.

Friday, May 08, 2015 T 0081/14: use claim of a product defined as a product-by-process

This appeal extends from a decision of the Opposition Division. The patent owner (Appellant) filed the appeal. Claim 8 of auxiliary request 3 has an interesting claim construction. It is a "use-claim", and as such a claim which relates to a "process". In the claim, the product-to-be-used has been defined as a product-by-process. This claim relates to a post-grant amendment and, as such, the Board has to discuss the Art. 84 EPC objection of the respondents (Opponents). When considering the Art. 84 PC objection, the Board has to consider whether the well-established case law regarding product-by-process claims also applies to this "use-claim". In this context, the Board also discusses argument of the Appellant which relate to "the interpretation of such a claim by a national court in infringement proceedings" and "similarities with Swiss-type claims".

Summary of Facts and Submissions

(...)
 
Claim 1 of auxiliary request 2 reads as follows:"1. A method of producing a sintered cemented carbide body having increased resistance to plastic deformation, comprising tungsten carbide, a binder phase comprising at least one metal of the iron group or an alloy thereof, and a solid solution phase comprising at least one of the carbides and carbonitrides of a combination of zirconium, niobium, and tungsten, wherein said body has a mass ratio Nb/(Zr+Nb) of at least 0.5, and wherein said solid solution phase is the sole solid solution phase of said body and (i) consists of a carbide or carbonitride of a combination of zirconium, niobium and tungsten or (ii) comprises a carbide or carbonitride of a combination of zirconium, niobium and tungsten, and at least one carbide, nitride or carbonitride of one or more of titanium, hafnium, vanadium, tantalum, chromium, and molybdenum;
said method comprising the steps of
a) providing a powder mixture comprising tungsten carbide, a binder metal powder comprising at least one metal of the iron group or an alloy thereof, and at least one of the carbides and carbonitrides of both, zirconium and niobium;
b) forming a green compact of said powder mixture;
c) vacuum sintering or sinter-HIP said green compact at a temperature of from 1400 to 1560 °C;
characterized in that in step a) a powdered solid solution of the carbides or carbonitrides of zirconium and niobium having a mass ratio Nb/(Zr + Nb) of at least 0.5 is used to form said powder mixture."
Claim 1 of auxiliary request 3 differs from claim 1 of auxiliary request 2 in that the claimed method is limited to the production of a body with
"a mass ratio Nb/(Zr+Nb) of 0.6 or more".
Moreover, auxiliary request 3 comprises use claims 8-12, the independent claim 8 of which reads as follows (emphasis added):
"8. Use of the sintered cemented carbide body obtained according to the method of any one of claims 1 to 7 for the production of a cutting tool."

(...)

Reasons for the Decision

(...)
 
3. Auxiliary request 3 - Article 84 EPC

3.1 The feature that the use of claim 8 concerns a product "obtained according to the method of any one of claims 1 to 7" was not present in the claims as granted but is the result of a post-grant amendment. Hence, the objection under Article 84 EPC raised against this feature has to be considered.

3.2 Article 84 EPC provides that the claims shall define the matter for which protection is sought and that they shall be clear and concise and be supported by the description. The requirement laid down in this article that the claims have to be clear reflects the demand for legal certainty, which is of paramount importance in any system where the rights of the public are affected by the grant of a monopoly.

3.3 Present claim 8 is directed to the use of the sintered cemented carbide body obtained according to the method of any one of claims 1 to 7 for the production of a cutting tool. Hence, the claim [claim 1] comprises process and product features and is notionally equivalent to a claim directed to a process for the production of a cutting tool using the sintered cemented carbide body (see G2/88, point 5.1 of the Reasons, OJ 1990, 93). Accordingly, as acknowledged by the appellant itself, the steps of the method for the production of the sintered cemented carbide body do not form part of the claimed activity [claim 8]. Indeed, had the appellant intended to include these steps in the claimed method it could have drafted the claim in different terms, for instance by directing it to a process for the production of a cutting tool using a sintered cemented carbide body and comprising the production of said sintered cemented carbide body according to the method of any one of claims 1 to 7.
Therefore, the reference in claim 8 to the steps of the method for the production of the sintered cemented carbide body does not define process features but solely the features of the product (the sintered body) used in the claimed method. As a consequence, the issue at stake when considering this reference in the context of Article 84 EPC is the assessment of the clarity of product features.

3.4 To ensure legal certainty the definition of a product is normally done by means of the structural features of the product, i.e. by features which can be verified on the product. A definition in terms of the process of manufacture, in the following a "product-by-process definition", in lieu of a definition in terms of structural features is reserved for cases wherein the latter definition is not possible. This principle is well established in the case law for a claim which is directed to a product, in the following a "product-by-process claim" (see for instance T150/82, point 10 of the Reasons, OJ 1984, 309).
It is true that present claim 8 is not directed to a product but to a process. However, there is no reason to make the principles underlying the assessment of the clarity of product features dependent on the fact that said product features appear in a claim directed to a product or in a claim directed to a method.

3.5 The appellant disagreed with this position and submitted that in case of infringement the features pertaining to the method of production of the sintered carbide would be fully taken into account by the court, so that the use of a sintered body which is merely obtainable by the method of any one of claims 1 to 7 but not actually obtained by this method would not infringe claim 8.
However, the Boards of Appeal are concerned only with validity and not with infringement, which is a matter reserved for the courts of the different contracting states, which may interpret the same claim in different ways. Accordingly, the Board is not in the position of considering the (possibly different) interpretations given to a "product-by process definition" in national infringement proceedings. This applies all the more in a case like the present one, wherein no specific decision of a national court has been submitted for consideration to the Board.
Moreover, although it is in general desirable that the interpretation of the meaning of the claims given by a court in infringement proceedings and that given by a board of appeal or a court when considering the validity of a claim are consistent with each other, situations exist wherein this is not achieved. Indeed an example of such a situation concerns "product-by-process claims". In the decision of the UK High Court of Justice, Chancery Division, Patents Court of 21 November 2014, in Hospira v. Genentech ([2014] EWHC 3857, points 143 to 147) Mr Justice Birss considered that, as far as infringement is concerned, a product "obtained by" a process means a product which has actually been obtained by that process. However, he did not adopt the same interpretation for the issue of validity but took instead the view that a new process which produces a product identical to an old product cannot confer novelty on that product, an interpretation corresponding to the established case law of the Boards of Appeal for a "product-by-process claim" (Case Law of the Boards of Appeal of the European Patent Office, 7h edition 2013, II.A.7.). Hence, the issue raised by the appellant is not specific to the use of "product-by-process definitions" in use claims but concerns also "product-by-process claims". Therefore, it cannot support the appellant's view that the requirements to allow a "product-by-process definition" are to be considered only for claims directed to a product and not for claims directed to a use.
Finally, the issue to be considered in the present case is not the interpretation of the claim for assessing novelty and inventive step, but rather whether the definition of the product chosen by the appellant is clear or not.
In view of these considerations, the allegedly different way in which claim 8 would be interpreted in infringement proceedings fails to dissuade the Board from applying the principles developed for "product-by-process" claims when considering the definition of the sintered body used in claim 8.

3.6 The same applies in respect to the reference to Swiss type claims made by the appellant. The so-called Swiss-type claims are claims directed to the use of a substance or composition for the manufacture of a medicament for a specified therapeutic application. According to decision G5/83 (OJ 1985, 64) they were to be allowed even in a case in which the process of manufacture as such does not differ from known processes using the same active ingredient, provided that the therapeutic application is new and inventive. The application of this special approach, which derived the novelty from the intended therapeutic use of the medicament, was restricted to claims to the use of substances or compositions intended for use in a method referred to in Article 52(4) EPC 1973 (corresponding to present Article 53(c) EPC), a so-called "medical use" (G5/83, last paragraph of point 21 of the Reasons). Accordingly, this approach finds no place in the consideration of a "product-by-process definition", i.e. a definition which does not involve the intended use of a product, let alone an intended "medical use", but rather concerns its process of production.

3.7 Therefore, the Board is satisfied that when considering the definition of a product in terms of its production process the principles developed in the jurisprudence for the "product-by-process claims" are in general to be applied, also in the case of a claim directed to the use of that product.

3.8 Applying said principles to present claim 8 the Board sees to reason why it would not have been possible to define the sintered body in terms of structural features, namely composition, microstructure and mechanical properties, i.e. the features which characterise the product in the examples of the patent in suit.
The appellant failed to convince the Board to the contrary, because it did not indicate concretely in which respect it would not be possible to define in terms of structural features a carbide body obtained by the method of claims 1 to 7.

3.9 Accordingly, the use of a product-by-process definition in claim 8 of auxiliary request 3 results in a lack clarity.

(...)


Order

For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The case is remitted to the Opposition Division for further prosecution on the basis of Auxiliary Request 4 filed with the statement of grounds of appeal on 24 February 2014.


This decision has European Case Law Identifier: ECLI:EP:BA:2015:T008114.20150312. The whole decision can be found here. The file wrapper can be found here. Advertisement  "Old Processee Starchee no goodee" "It smellee rots & makee shirts yellee", "I will never use any other but the New Process Starch" published by Boston Public Library obtained via Flickr under CC BY 2.0 license.

Friday, May 16, 2014 T 1780/12 - Antibodies for cancer treatment - double patenting?

Photo by Dawn Huczek obtained via Flickr.

This is an appeal against the Decision of the Examining Division refusing a European patent application (herinafter "EP2"), with EP2 being a divisional application of a European patent application which has been granted (herinafter "EP1").

The Examining Division refused the divisional application under Article 97(2) EPC in conjunction with Article 125 EPC ("double patenting").

Claim 1 of EP1 read:

"1. Use of a composition comprising a biologically effective amount of an anti-aminophospholipid antibody, or antigen-binding region thereof, in the manufacture of a medicament for the treatment of cancer by killing tumor vascular endothelial cells of a vascularised tumor".

Claim 1 of the main request before the Examining Division read:

"1. A composition comprising a biologically effective amount of an anti-aminophospholipid antibody, or antigen-binding region thereof, for the treatment of cancer by killing tumor vascular endothelial cells of a vascularised tumor, inducing coagulation in tumor vasculature or destroying tumor vasculature."

In the decision under appeal the Examining Division held that:

"A claim directed to a second or further medical use claim under Article 54(5) EPC is considered to be directed to the same subject-matter as a Swiss type claim directed to the same medical use, in the sense that both these claims concern the same invention claimed in a different format".  The examining division also considered that "(…) double patenting is concerned with the substantial identity of claimed subject-matter and is not related to the (only potential) variance in the granted protection."

With its statement of grounds of appeal the appellant filed a new main request of which claim 1 was identical to claim 1 of the main request before the Examining Division.

The appellant requested that the decision of the examining division be reversed insofar as it resulted in refusal of this application. The arguments of the appellant:

"The claims of EP1 were formatted in accordance with decision G 5/83. It was widely accepted that this format of claim was a purpose-limited process claim. By comparison, the claims of the present application (EP2) were formatted in accordance with Article 54(5) EPC 2000. These claims were purpose-limited product claims, i.e. the product when packaged for that use. (...) The fact that these claim formats differed in scope was confirmed by the Enlarged Board of Appeal in decision G 2/08.

Decisions G 1/05 and G 1/06 referred to the same subject-matter. If the claims were not at least substantially identical in scope, they could not constitute the same subject matter. A process claim and a product claim could not be substantially identical in scope. For the reasons stated above, the claims were clearly distinguishable in scope and therefore were not directed to the same subject matter."

Reasons for the Decision

5. The examining division based its refusal (see section VII above) on established practice of the EPO departments of first instance (see Guidelines for Examination, C-VI, 9.1.6 and C-IV, 7.4) and decisions G 1/05 and G 1/06 of the Enlarged Board of Appeal (OJ EPO 2008, 271 and 307, respectively).

(...)

7. These passages of the Guidelines for Examination thus restrict the prohibition of double patenting to applications claiming the same invention, and more specifically to parent and divisional applications claiming "the same subject-matter". Thus, pursuant to the Guidelines, in order to determine whether or not the same invention is claimed, the claimed subject-matter has to be determined first.

(...)

10. Therefore, the board finds it appropriate to address first the issue of what constitutes the claimed subject-matter in the case under consideration.

Subject-matter

11. In decision G 2/88 (OJ EPO 1990, 93, see point 2 of the reasons) the Enlarged Board of Appeal was confronted with two points of law concerned with the interpretation and effect of patent claims. The Enlarged Board of Appeal considered (ibid., point 2.6 of the reasons) that: "(…) the subject-matter of a claimed invention involves two aspects: first, the category or type of the claim, and second, the technical features, which constitute its technical subject-matter."

(...)

13. In the board's judgement, it follows from decision G 2/88, supra, that the category of a claim and its technical features constitute its subject-matter and determine the protection conferred. This board is not aware of any different, commonly accepted definition of the term "subject-matter" in the context of a claim. While the board agrees with the examining division that EP1 and the present application relate to the same invention, the board concludes that the approach taken by the examining division when finding that the same invention eo ipso had to mean that the same subject-matter was claimed is neither supported by the Guidelines nor by the case law.

14. In the present case, what has to be considered and decided is whether or not the subject-matter of the claims, as defined by their categories in combination with their technical features, is the same for the claims granted for EP1 and pending for the main request.

15. The appellant disputes that the subject-matter of the claims granted for EP1 is the same as that of the main request (see section XVI above).

16. Claims 1, 24 and 25 of EP1 are formatted in accordance with decision G 5/83, supra, as so-called Swiss-type claims (see section III above for the complete wording of the claims). These claims take the form "Use of X for the manufacture of a medicament for the treatment of Y", i.e. they are purpose-limited process claims. The claims of the main request are formatted in accordance with Article 54(5) EPC (see section IV above for the complete wording of the claims). These claims take normally the form "X for use in the treatment of Y" and are construed as purpose-limited product claims. Thus, the categories of the claims granted for EP1 and of the claims pending as main request, respectively, are different.

17. As regards the technical features, both set of claims define the same compound and the same therapeutic use but the claims of EP1 comprise in addition the manufacture of a medicament while the claims of the main request do not (again, see sections III and IV above for the complete wording of the claims). The board concludes that the claimed subject-matter is different between EP1 and the main request.

Scope of protection

18. The examining division further held (see section VII above) that "double patenting is concerned with the substantial identity of claimed subject-matter and is not related to the (only potential) variance in the granted protection".

(...)

21. As set out in decision G 2/88 (supra, see reasons, point 3.3) the "(...) determination of the "extent of the protection conferred" by a patent under Article 69(1) EPC is a determination of what is protected in terms of category plus technical features (...)".

22. It follows from the above analysis (see points 16 and 17) that the claims under consideration belong to different categories, i.e. purpose-limited process claim vs. purpose-limited product claim and differ in addition in at least one technical feature. It is generally accepted as a principle underlying the EPC that a claim to a particular physical activity (e.g. method, process, use) confers less protection than a claim to the physical entity per se, see decision G 2/88 (supra, reasons, point 5). It follows that a purpose-limited process claim also confers less protection than a purpose-limited product claim. The scope of protection sought by the invention claimed pursuant the present main request is thus noticeably different from the scope of protection conferred by claims 1, 24 and 25 of EP1, see also decisions T 0795/06 of 18 March 2010 (points 6.3 to 6.4 of the reasons) and T 1635/09 of 27 October 2010 (points 14 and 15.1 of the reasons).

(...)

25. It follows from the above analysis that the subject-matter and the scope of protection conferred by claims 1 (...) granted for EP1 differ from the subject-matter and the scope of protection conferred by claim 1 of the main request. The board is thus satisfied that there is no manifest objective reason to deny the legitimate interest of the applicant in pursuing claims drafted in accordance with Article 54(5) EPC and thereby obtaining protection different from - albeit partially overlapping - with that of the Swiss-type claims of the parent patent already granted.

26. The board concludes that the grant of a patent on the basis of present claim 1 would not lead to double patenting. The appeal is thus allowable.

This decision has European Case Law Identifier:  ECLI:EP:BA:2014:T178012.20140130. The whole decision can be found here. The file wrapper can be found here.