Wednesday, December 09, 2015 T 2477/12 - Priority (yes); Priority application incorporated by reference (no)

The EPO does not like the 'herein incorporated by reference' statement in applications, which is once again made clear in this Board of Appeal decision in which an applicant filed a divisional application without a sequence listing and relied on the fact that the priority document did contain the specified sequences, and that the priority document was referred to in the specification of the divisional as 'herein incorporated by reference'. The Board states that "in view of the degenerate nature of the genetic code, a mere verbal reference to a nucleic acid sequence encoding canine pre-proBMP-7 cannot be regarded as an implicit disclosure of a particular nucleic acid sequence encoding said gene. As far as protein sequences are concerned, a mere verbal reference to an amino acid sequence of canine pre-proBMP-7 does not necessarily disclose a particular amino acid sequence, as more than one such sequence may be known."
The Board cites T 689/90 and T 1497/06 for particular conditions that need to be satisfied to allow the incorporation of subject matter from a cited document. If the applicant would have indicated particular sequences that were presented in the priority application, then the Board might have reached a different conclusion but here the applicant could only rely on a general reference to the priority document, and it did not make it unambiguously clear that the sequences relied on were the ones specifically described in the priority application.

Summary of Facts and Submissions

I. The appeal lies against the decision of the examining division posted on 4 July 2012, whereby European patent application No. 10150052.8 was refused because it did not comply with the requirements laid down in Articles 76(1) and 83 EPC.

Friday, September 04, 2015 T 1436/12 Change of a referenced document

In this appeal following a refusal by the examining division, the Board did not allow a change of reference to a document incorporated by reference as a correction or as an amendment. The applicant had in the application made a reference to a US application identified by the internal patent attorney docket number (the US application number was not yet known). The applicant requested in appeal proceedings to change the reference to a PCT application which claimed priority from the US application. The Board examined the matter thoroughly. One consideration for not allowing the change was that at the moment of filing the European application the US files was not public; so it could not be verified based on the attorney docket number, which was in the US file, which applications were involved.