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, September 12, 2014 T 879/12 - Again, no double patenting

This is an appeal against the decision of the examining division to refuse a European patent application, a second-generation divisional application. The examining division had held that the second-medical use claim in the purpose-limited format of Art.54(5) EPC related to the same subject-matter as the Swiss-type claims as granted with the grandparent application. The Board followed the argumentation of earlier T 1780/12 (taken by another board), and held the examining division to be wrong. Followers of our blog may find the differences with the conclusion in T 1570/09 interesting, where the Board denied the simultaneous presence of both claims in a single application (see e.g., T 1570/09, r.4.1 and r.4.8).

Summary of Facts and Submission
III. The applicant (appellant) submitted its statement of grounds of appeal and, in a further submission, referred to the identity of the legal issues in the present case and in decision T 1780/12 of 30 January 2014, taken by another board.

IV. Claim 1 of the request before the board, which is identical to the request before the examining division, reads as follows:
"1. An Apo-2 ligand for use in a method for treating cancer, wherein the Apo-2 ligand is:
(a) a polypeptide comprising amino acid residues 41-281 of Figure 1A (SEQ ID NO: 1);
(b) a polypeptide comprising amino acid residues 114-281 of Figure 1A (SEQ ID NO: 1);
(c) a polypeptide consisting of amino acid residues 114-281 of Figure 1A (SEQ ID NO: 1);
(d) a polypeptide consisting of amino acid residues 1-281 of Figure 1A (SEQ ID NO: 1); and
(e) a polypeptide which is a fragment of (a), (b), (c), or (d); and
wherein the cancer is squamous cell carcinoma, small cell lung carcinoma, non-small cell lung carcinoma, neuroblastoma, pancreatic cancer, glioblastoma multiforme, cervical cancer, stomach cancer, bladder cancer, hepatoma, breast cancer, colon carcinoma, head and neck cancer, prostate cancer or ovarian cancer and the Apo-2 ligand induces apoptosis in the cancer cells."
Dependent claims 2 to 8 refer to specific embodiments of the subject matter of claim 1.

V. Claim 1 of the grandparent application as granted reads:
"1. Use of an Apo-2 ligand for the preparation of a medicament for the treatment of cancer, wherein the Apo-2 ligand is:
(a) a polypeptide comprising amino acid residues 41-281 of Figure 1A (SEQ ID NO:1);
(b) a polypeptide comprising amino acid residues 114-281 of Figure 1A (SEQ ID NO:1);
(c) a polypeptide consisting of amino acid residues 114-281 of Figure 1A (SEQ ID NO:1);
(d) a polypeptide consisting of amino acid residues 1-281 of Figure 1A (SEQ ID NO:1); and
(e) a polypeptide which is a fragment of (a), (b), (c), or (d); and
wherein the cancer is squamous cell carcinoma, small cell lung carcinoma, non-small cell lung carcinoma, neuroblastoma, pancreatic cancer, glioblastoma multiforme, cervical cancer, stomach cancer, bladder cancer, hepatoma, breast cancer, colon carcinoma, head and neck cancer, prostate cancer or ovarian cancer and the Apo-2 ligand induces apoptosis in the cancer cells."

Dependent claims 2 to 8 refer to specific embodiments of the subject matter of claim 1, specifying the same additional features as claims 2 to 8 of the request before the board.

Reasons for the Decision
Double patenting
2. The sole ground for refusal of the present patent application was the prohibition of double patenting.

3. Under the EPC 1973 a patent for a further medical application could, pursuant to a line of case law first set out in decision G 5/83 (OJ EPO 1985, 64), be granted for a claim directed to the use of a substance or composition for the manufacture of a medicament for a specified therapeutic application (so called "Swiss-type claim") (cf. "Case Law of the Boards of Appeal of the EPO", 7th edition 2013, I.C.6.2.1, 144).
During the course of the revision of the EPC 2000, former Article 54(5) EPC 1973 ("first use in a medical method") was renumbered to become Article 54(4) EPC and a new Article 54(5) EPC was introduced to provide protection for second medical uses. The new Article 54(5) EPC eliminates any legal uncertainty on the patentability of further medical uses. It unambiguously permits purpose-restricted product protection for each further new medical use of a substance or composition already known as a medicine (cf. "Case Law of the Boards of Appeal of the EPO", ibid.).

4. Claim 1 of the present application is in the form of a purpose restricted product claim ("An Apo-2 ligand for use in a method for treating cancer"; cf. item IV above) according to Article 54(5) EPC 2000.
Claim 1 of the grandparent application was granted in the "Swiss-type" format ("Use of an Apo-2 ligand for the preparation of a medicament for the treatment of cancer"; cf. item V above) under the provisions of Article 54(5) EPC 1973.

5. The examining division stated in its decision that a claim directed to a second or further medical use claim under Article 54(5) EPC 2000 was 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 concerned the same invention claimed in a different format.

6. The principle of the prohibition of double patenting is based on the idea that the applicant has no legitimate interest in proceedings that give rise to the grant of a second patent in respect of the same subject-matter for which he already holds a patent (cf. Reasons 13.4 of decision G 1/05, OJ EPO 2008, 271).

7. The decisive issue is therefore whether the subject matter of claim 1 of the present application is the same as the subject matter of claim 1 of the grandparent application.

8. The present case has much in common with the case underlying decision T 1780/12 of 30 January 2014.
The crucial issue for the main request underlying said decision was also whether the subject matter of a claim directed to a new medical use of a known compound was the same, irrespective of whether the claim was in the "Swiss-type" format or in the format according to Article 54(5) EPC 2000.
Furthermore, the board notes that points 1 and 3 to 8, and, with the exception of a single sentence, all of point 2, of the decision of the examining division underlying the present appeal (see item VI above) can be literally found in points 2 to 10 of the decision of the examining division underlying appeal case T 1780/12 (cf. item VII of decision T 1780/12).

9. Like in the present case, a parent application had been granted with claims in the "Swiss-type" format for the 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. A divisional application (underlying T 1780/12) had been filed with a main request comprising purpose-restricted product claims referring to a composition comprising a biologically effective amount of an anti-aminophospholipid antibody, or antigen-binding region thereof, for the treatment of cancer. Further claims, referring to features specifying a mechanism of action, were identical in both types of claims.
The examining division had refused the main request of the divisional application under Article 97(2) EPC in conjunction with Article 125 EPC because, in its view, claim 1 before it related to the same subject matter as granted claims 1, 24 and 25 of the parent application.

10. Regarding the issue of what constitutes the subject matter of a claim, the board in T 1780/12 concluded, by reference to decision G 2/88 (OJ EPO 1990, 93), that the category or type of claim and its technical features constitute its subject matter (cf. T 1780/12, Reasons 11 to 13). It was therefore necessary to establish whether or not the subject matter of the claims as defined by their categories in combination with their technical features was the same.

11. The board stated that Swiss-type claims of the form "Use of X for the manufacture of a medicament for the treatment of Y" are construed as purpose-limited process claims while claims formatted in accordance with Article 54(5) EPC as "X for use in the treatment of Y" are construed as purpose-limited product claims. The categories of the claims are therefore different (cf. T 1780/12, Reasons 16).
Regarding the technical features, the board concluded that both sets of claims defined the same compound and the same therapeutic use, but that the Swiss-type claims comprised in addition the feature of manufacturing a medicament while the claims of the request before it did not (cf. T 1780/12, Reasons 17).
The board therefore decided that the subject matter of the claims of the main request before it was different from the subject matter of the Swiss-type claims of the parent application.

12. The board also dealt with the examining division's argument that "double patenting is concerned with the substantial identity of claimed subject matter and is not related to the (only potential) variance in granted protection".

13. In this respect, the board in case T 1780/12, agreed with the finding in decision T 1391/07 of 7 November 2008, that an applicant's lack of legitimate interest in patenting the same subject matter twice, invoked by the Enlarged Board in decision G 1/05 (cf. point 6, supra) could not be invoked in the case in which the scopes of protection only partially overlapped as there was no objective reason to deny the legitimate interest of an applicant in obtaining a protection different from that of the parent patent already granted (cf. T 1780/12, Reasons 19). Any potential variance in the scope of protection afforded by the claims was therefore crucial to the decision to be taken.
Based on point 3.3 of the Reasons of decision G 2/88, the board concluded that the category of a claim and its technical features constitute its subject matter and determine the protection conferred (cf. T 1780/12, Reasons 21). Thus, contrary to the examining division's view, the claimed subject matter and the scope of protection conferred by the claims are intrinsically linked.
Since the purpose limited process claim (Swiss-type claim) and the purpose-restricted product claim according to Article 54(5) EPC 2000 belonged to different categories and differed in at least one technical feature, they differed in the scope of protection afforded (cf. T 1780/12, Reasons 20 to 22).
There was no manifest objective reason to deny the legitimate interest of the appellant in pursuing claims drafted in accordance with Article 54(5) EPC 2000 and thereby obtaining protection different from - albeit partially overlapping - with that of "Swiss-type" claims of the parent application already granted (cf. T 1780/12, Reasons 25).

14. This board agrees with the legal assessment in decision T 1780/12 in that the scope of the claims in both cases is different, and considers its conclusions to be directly applicable to the present case.

15. In the present case, the claims of the patent application and the grandparent application define the same compound (an Apo-2 ligand defined by features (a) to (e)), and the same therapeutic use (the treatment of the same cancers, as specified in the claims (cf. items IV and V, above). But the subject matter of claim 1 is defined in the format of a purpose-restricted product claim, whereas the subject matter of claim 1 of the grandparent patent is defined in the Swiss-type format.
Since the categories of the claims are different and there is at least one difference in the technical features defining the claimed subject matter (the manufacture of a medicament), the subject matter defined by the claims and the scope of protection conferred by the claims are different.

16. The board therefore decides that granting a patent on the basis of claims 1 to 8 would not lead to double patenting.

17. Since the board does not uphold the decision under appeal, there is no need for oral proceedings (cf. item VIII, above).

18. As the decision under appeal is exclusively concerned with the issue of double patenting (cf. item II above) the Board decides to remit the case to the department of first instance for further prosecution (Article 111(1) EPC).

Order
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The case is remitted to the examining division for further prosecution on the basis of

claims 1 to 8, filed under cover of a letter dated 22 October 2009.


This decision has European Case Law Identifier:  ECLI:EP:BA:2014:T087912.20140827. The whole decision can be found here. The file wrapper can be found here. Photo "Swiss flags" by Janet McKnight obtained via Flickr.

Thursday, September 04, 2014 T 1570/09 - Getting both

In this examination the Board had to decide on a claim set that included both a Swiss type claim and a purpose-limited product claim under Article 54(5) EPC 2000. The two second medical-use claims were formulated as follows (emphasis mine)

Claim 1 in the main request before the board read:

1. Use of at least one member selected from the group consisting of alpha-ketoglutaric acid and pharmaceutically acceptable salts thereof, for the manufacture of a pharmaceutical preparation or a food or feed supplement for increasing plasma levels of high density lipoprotein (HDL) in vertebrates, such as birds and mammals, including man.

and Claim 4 read

4. A compound selected from the group consisting of alpha-ketoglutaric acid and pharmaceutically acceptable salts thereof, for use in increasing plasma levels of high density lipoprotein (HDL) in vertebrates, such as birds and mammals, including man.

The priority date of the application was 17.06.2004, thus before the decision G2/08 which abolished the Swiss type Claim. According to the minutes of the oral proceedings before the board both Claim 1 and Claim 4 were allowable.

The applicant would like to get both his two claims granted.


According to the applicant, it is accepted practice before examining divisions to allow both claim types together, since the entry into force of EPC 2000. Moreover, this would be needed because the interpretation of the two different claim forms by the national courts of the contracting states might differ from one state to another and also deviated from the EPO's practice.

This is what the board had to say about it:


Reasons for the Decision


(...)
4. Main request
4.1 It is generally known to the skilled person (see documents D5 to D7) that increasing plasma levels of high density lipoprotein (HDL) in human and animals is a medical indication for treatment, including prophylaxis, of several medical conditions and diseases.

The set of claims of the main request contains two independent claims (claims 1 and 4) concerning the further therapeutical use, defined as "increasing plasma levels of high density lipoprotein (HDL) in vertebrates, such as birds and mammals, including man", of the known substance alpha-ketoglutaric acid (and pharmaceutically acceptable salts thereof).

Therefore, claim 1 of the main request, which is drafted in Swiss-type form, and claim 4 of the main request, which is drafted as purpose-limited product claim, aim to seek protection for one and the same medical use of one and the same active drug.

4.2 The legal fiction in accordance with the praetorian rule introduced with Enlarged Board of Appeal decision G 1/83 (G 5/83, G 6/83), OJ EPO 1985, 60, has to be applied for conferring notional novelty to the subject-matter claimed in the Swiss-type claim 1 of the main request.

Enlarged Board of Appeal decision G 1/83 (G 5/83, G 6/83) introduced the "Swiss-type" form claim in consideration of the fact that the provisions of EPC 1973, and in particular of its Article 54(5), allowed purpose-related product claims only for the first (generic) medical use of a known substance or composition. In other words, in accordance with the provisions of EPC 1973, claims drafted in the form of a product claim directed to a substance or composition for use in a method referred to in Article 52(4) EPC 1973 are allowable if the first medical use of a known substance or composition is novel under Article 54(5) EPC 1973. In contrast to the first medical indication of a known substance or composition in the form of such "use-related product claims" under Article 54(5) EPC 1973, there was an absence of provisions in EPC 1973 allowing purpose-limited product claims for further specific medical indications (see G 2/08, OJ EPO 10/2010, 456, points 5.8 and 5.9 of the Reasons, and G 5/83, OJ EPO 1985, 64, point 15 of the Reasons).

4.3 Apart from this, a body of jurisprudence has been developed over the years by the Boards of Appeal which concerns the application of the praetorian rule introduced by Enlarged Board of Appeal decision G 1/83 (G 5/83, G 6/83) to particular situations in which the "invention" for which protection was sought relied upon a new use of a substance or composition in a method of treatment referred to in Article 52(4) EPC 1973 (Article 53(c) EPC 2000).

Thus, although Swiss-type claim 1 does not explicitly employ the term "medicament" the claim's wording is appropriate to the situation in the technical field underlying the present invention at the date of filing, where the term "medicament" has to be taken in a broader sense than the classical meaning in the year 1985, when the Enlarged Board of Appeal decision G 1/83 (G 5/83, G 6/83) was issued. Additionally, it has to be stressed that the "medicament" itself (and its definition in claim 1 of the main request) does not confer notional novelty on the claimed subject-matter. The notional novelty of the subject-matter claimed in claim 1 of the main request relies on the novelty of the medical indication specified in said claim.

Such a situation is referred to in Enlarged Board of Appeal decision G 2/08, OJ, EPO 10/2010, 456, point 7.1.1 of the Reasons, second and third paragraphs:

"Since the medicament per se was not new the subject-matter of such a claim was rendered novel by its new therapeutic application (cf. G 5/83, points 20 and 21 of the Reasons). This praetorian approach was a "special approach to the derivation of novelty" (cf. point 21 of G 5/83) and therefore constituted a narrow exception to the principles governing the novelty requirements which was not intended to be applied in other fields of technology.

That praetorian ruling found its cause in the fact that a claim directed to the use of the substance or composition for the treatment of the human body by therapy had to be regarded as a step of treatment (see point 18, in fine of G 5/83). A claim of that kind was forbidden. On the other hand only the first medical indication of a known composition in the form of a medicament was by virtue of Article 54(5) EPC 1973 (Article 54(4) EPC 2000) entitled to be drafted in the form of a purpose-related product claim. And since the intention of the legislator was clearly not to exclude second therapeutic indications of a known medicament from the field of patentability the so-called Swiss-type claim constituted the adequate but exceptional solution."

4.4 Moreover, following the rationale of Enlarged Board of Appeal decision G 2/08, as expressed in paragraph 7.1.2 of the Reasons:

"Article 54(5) EPC now permits purpose-related product protection for any further specific use of a known medicament in a method of therapy. Therefore, as mentioned in the preparatory document (MR/24/00, point 139) the loophole existing in the provisions of the EPC 1973 was closed.
In other words "cessante ratione legis, cessat et ipsa lex", when the reason of the law ceases, the law itself ceases.

The cause of the praetorian approach ceasing, the effect must cease."

In the present case the appellant has been able to formulate under Article 54(5) EPC 2000 an allowable purpose-limited product claim (claim 4 of the main request) which seeks protection for the same medical indication of the same substance as in the Swiss-type claim 1, and the notional novelty of claim 1 is not derived from the "medicament" itself. Therefore, there is no longer an objective reason for justifying the simultaneous presence of both claims in the set of claims to be proposed for grant. Allowing such a set of claims would cause the contradictory legal situation that the old provisions in Article 54 EPC 1973 together with Article 52(4) EPC 1973, and the new provisions in Article 54 EPC 2000 together with Article 53(c) EPC 2000 would apply simultaneously to one and the same set of claims.

Enlarged Board of Appeal decision G 2/08 announced the official end to the praetorian rule set out in G 5/83, OJ EPO 1985, 64, in its answer to question 3 as follows:

"Where the subject-matter of a claim is rendered novel only by a new therapeutic use of a medicament, such claim may no longer have the format of a so called Swiss-type claim as instituted by decision G 5/83.

A time limit of three months after publication of the present decision in the Official Journal of the European Patent Office is set in order that future applicants comply with this new situation".

Fixing an official time limit for the end of the praetorian rule merely solved any possible problems derived from the fact that at the time of the publication of G 2/08 in the OJ EPO (October 2010) many applications for which the transitional provisions governing the entry into force of EPC 2000 applied were still pending and the abolition of the praetorian rule should therefore not create a retroactive legal effect (G 2/08, point 7.1.4 of the Reasons).

However, G 2/08 does not give applicants an absolute right to draft two independent claims in one single set of claims for one and the same medical indication of one and the same substance, one claim following the praetorian rule introduced in view of the old provisions of EPC 1973, and the other claim following the new provisions in Article 54(5) EPC 2000.

4.5 The appellant submitted that including both claims in a single set of claims served to protect its legitimate interests, since it was to be expected that different national courts would decide divergently on patentability of claims seeking protection for a further use in a method referred to in Article 53(c) EPC 2000.

Apart from the fact that such argumentation would rather justify the filing of two separate sets of claims (one with claims in the form of Swiss-type claims, the other with claims in the form of purpose-limited product claims) depending on the contracting states for which particular national jurisprudence was applicable, the appellant did not cite any such national decisions to support its argument.

The relevance for the present appeal case of a theoretical possibility of supposedly conflicting national decisions cannot be seen. Moreover, Article 4(3) EPC confers on the European Patent Organisation the authority to grant European patents.

The issue is whether it is allowable in view of the Enlarged Board of appeal decisions G 1/83 (G 5/83, G 6/83) and G 2/08 to have two independent claims directed to the same known substance for use in the same further method for treatment formulated in accordance with EPC 1973 on the one hand, and in accordance with EPC 2000 on the other hand. It is thus an issue of the transitional application of the law as authoritatively interpreted by the Enlarged Board of Appeal.

4.6 Under the circumstances depicted above, the appellant's argument that Swiss-type form claims and purpose-limited product claims confer different scopes of protection under Article 69 EPC at national level cannot succeed as a valid justification for allowing the main request. The answer given to question 3 in G 2/08 confirms that the theoretical possibility of different interpretations of the scope of protection conferred under Article 69 EPC at national level is not stated as a reason for prolonging the life of Swiss-type form claims in those cases where there is no longer any legal reason for applying the praetorian rule in accordance with the old law (EPC 1973) instead of Article 54(5) EPC 2000.

4.7 The appellant also asserted that there was a practice followed by the EPO examining divisions, after the entry into force of EPC 2000, of granting both forms of claims in the same set of claims. However, the boards of appeal have to comply with the provisions of the EPC and are not bound by the interpretations and practice of the examining divisions (Article 23(2) EPC 2000).

4.8 Summarising, Article 54(5) EPC 2000 applies to the present case (Article 1(3) of the decision of the Administrative Council of 28 June 2001 on the transitional provisions under Article 7 of the Act revising the European Patent Convention of 29 November 2000, and thus the purpose-limited product claim 4 of the main request is allowable for seeking protection for the further (specific) medical indication of alpha-ketoglutaric acid (and pharmaceutically acceptable salts thereof).

The Swiss-type form was conceived as an exception under the old law (EPC 1973). Therefore, since Article 54(5) EPC 2000 applies to the present application and claim 4 of the main request is allowable in view of a new medical indication of a known substance, there is no longer any legal reason in the present case for allowing Swiss-type claim 1 in the set of claims of the main request. Accordingly, the main request is not allowable.

4.9 As regards the appellant's general comments relating to the fact that a request to the Regulatory Authorities has to be submitted before commercializing products in the medical field, this situation applies to both Swiss-type claims and purpose-limited product claims. Moreover, the provisions in the EPC concern the requirements to be fulfilled in order that a patent can be granted, which are different requirements to, and independent from, those that have to be fulfilled for a product to obtain marketing authorisation from a Regulatory Authority.


This decision has European Case Law Identifier:  ECLI:EP:BA:2014:T157009.20140516. The whole decision can be found here. The file wrapper can be found here. Photo by Andreas Kambanis obtained via Flickr.

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.