T 0395/18 - Administering through the mother

 Key points

• Claim 1 is directed to: “1. A composition comprising a non-digestible oligosaccharide for use in decreasing or preventing an allergic reaction in a mammalian subject [i.e. a baby], wherein the composition is administered to a lactating, postpartum female [i.e. the baby's mother] who is breast-feeding the mammalian subject [baby] and wherein the non-digestible oligosaccharide comprises galacto-oligosaccharide.”
• The Board has no comments on the second medical use claim format for this claim wherein the active substance is supplied to the mother and the recited therapeutic effect occurs in the baby. “Claim 1 is drafted in the format foreseen by Article 54(5) EPC. Accordingly, attaining the claimed therapeutic effect is a functional technical feature characterising the claim.”
• The critical issue is sufficiency of disclosure. The Board admits the opponent's new submissions after the preliminary opinion. “The preliminary opinion given by the board in its communication is based essentially on facts and arguments presented by the parties in writing. Nonetheless, the communication crystallised for the first time what the board itself had deduced to be the essential elements of the lengthy arguments presented by the parties when discussing sufficiency of disclosure. In particular, the communication drew attention to some paragraphs of the opposed patent discussing the principle underlying the claimed invention which convey the impression that, at the filing date, the skilled person would have assumed any galacto-, fructo- or acidic oligosaccharide to be suitable, individually, to induce the alleged therapeutic effect (paragraphs [0032], [0033], [0092] and [0102]). Furthermore, the communication drew attention to the results of the tests described in paragraph [0102] of the patent. It also clearly put the burden of proof regarding sufficiency on the respondent [opponent], thus contradicting the position taken by the opposition division.”
• On the substance of sufficiency, the Board finds that handbook D13, submitted by patentee, throws doubt on the alleged effect. “The mixed results throw serious doubts as to whether the claimed therapeutic treatment can be carried out, all the more so when considering that the principle underlying the invention - to administer oligosaccharides to a lactating mother in order to achieve a pharmacological effect in a child - departs considerably and constitutes a radical development from the teachings in the common general knowledge reflected in D13, which teaches administering the oligosaccharides directly to the child.” 
• AR-7 wherein the composition "comprises galacto-oligosaccharide, fructo-oligosaccharide and acidic oligosaccharide" is found to be sufficiently disclosed.

EPO T 0395/18 - link

decision text omitted.

T 0478/17 - Article 123(2) objection as fact

 Key points

• The opponent raises an article 123(2) objection against dependent claims 2-4 in its Statement of grounds. In the first instance proceedings, "the only objection under Article 123(2) EPC was raised in the oral proceedings against dependent claims 12-18 of the main request. "
• “Pursuant to Article 12(4) RPBA 2007, the board has the power to hold inadmissible, inter alia, facts and evidence which could have been presented or were not admitted in the first-instance proceedings even if they were presented with the statement of grounds of appeal and the requirements of Article 12(2) RPBA 2007 are met.”
• Article 12(4) RPBA 2007 does not simply say 'objections', just as Article 114 EPC does not refer to late-filed objections. 
• The present Board: “Dependent claims 12-18 of the main request define the further ingredients and their amounts. Claims 2-4 of the main request, on the other hand, concern crystalline properties of the hemitartrate salt of claim 1 of the main request. Thus, the objection of added subject-matter against claims 2-4 of the main request is based on facts different from the ones presented in the context of claims 12-18 of the main request before the opposition division. Thus, the objection under Article 123(2) EPC against claims 2-4 of the main request is neither based on nor derivable from the objection raised before the opposition division.” 
• “It constitutes a new allegation of fact raised for the first time in the statement of grounds of appeal (paragraph 2).”
  
  
• The Board also acknowledges the inventive step for a salt form of a medical compound.
• “The board distinguishes the present case from the situation at issue in decision T 777/08. This decision dealt with an arbitrary selection of any crystalline form and considered it obvious that any arbitrary crystalline form had better filterability and drying characteristics than the corresponding amorphous form. This is entirely different from the present case. The present case is not about the selection of any crystalline form but about the selection of one specific salt, namely eliglustat hemitartrate, in which at least 70% by weight of the salt is crystalline. Furthermore, the selection of this specific salt is not arbitrary. Rather, this salt has unexpected properties, namely an improved (reduced) hygroscopicity and an improved chemical stability.”

EPO T 0478/17 - link

decision text omitted.

T 0264/17 - Inactive substance for 2nd medical use

Key points

• The claim is directed to an inert lubricant to replace the synovial fluid in diseased joints. The Board judges that this is a proper second medical use claim and that the lubricant is a 'substance or composition'  in the sense of  Article 54(4) (first medical use) and Art.54(5) EPC even though the lubricant is inert in the human body. 
• " Synovial fluid,  is a viscous, non-Newtonian fluid found in the cavities of synovial joints. With its egg white–like consistency, the [principal role of synovial fluid is to reduce friction between the articular cartilage of synovial joints during movement. " (Wikipedia)
• The present Board applies the test of T2003/08 that " it is decisive for determining whether or not a "substance" or "composition" is used in a treatment to establish (a) the means by which the therapeutic effect is achieved and (b) whether that which achieves the therapeutic effect is a chemical entity or composition of chemical entities." 
• The Board in T2003/08 added that “A ‘device’ would not normally be denoted as a chemical entity”, referring to a stent or catather as example 
• I'm not sure why this would be the case. A device consists of molecules, and a stent may even contain 'special' molecules such as taxol, e.g. T583/11). 
• So presumably criterion A excludes medical use claims based on medical devices and criterion B excludes medical use claims based on inert components such as fillers and excipients.
• The present Board: “Im vorliegenden Fall ist die Kammer der Überzeugung, dass die beanspruchten Schmiermittel einen "Stoff" bzw. ein "Stoffgemisch" im Sinne des Artikels 54(5) EPÜ darstellen, und zwar aus folgenden Gründen: Die beanspruchten perfluorierten Polyether sind Flüssigkeiten, die weder vor noch nach dem Einbringen in den Körper von sich aus eine definierte Form einnehmen. Die therapeutische Wirkung entsteht nicht durch eine vorhandene oder sich im Körper bildende dreidimensionale Form, sondern durch die Substanz an sich. Es kann daher vorliegend nicht von einer Vorrichtung oder einer Apparatur gesprochen werden.”. 
• “Darüber hinaus erfüllen die beanspruchten Schmierstoffe auch die Kriterien, die in der von der Prüfungsabteilung angeführten Entscheidung T 2003/08 entwickelt wurden, unabhängig davon, ob man sie als "Aktivstoffe" im klassischen Sinn bezeichnen möchte oder nicht.”.
• “Der therapeutische Effekt wird auch unzweifelhaft von einer chemischen Zusammensetzung verursacht, nämlich von den in Anspruch definierten perfluorierten Polyethern. Ob diese im klassischen Sinn als "Aktivstoffe" bezeichnet werden oder nicht, ist dabei nebensächlich. Kriterium (b) ist somit ebenfalls erfüllt.”

EPO T 0264/17 - https://www.epo.org/law-practice/case-law-appeals/recent/t170264du1.html

decision text omitted.

T 0886/15 - Technical considerations for extracting features

 Key points

• The Board examines Article 123(2) in opposition.
• The added features have no literal basis in the original application documents. The question is whether the embodiment of Figure 23 provides basis. Figure 23 teaches more features, some of them being omitted from the claim. The typical test in such cases is 'inextricably linked' (CLBA II.E.1.9). 
• The Board: “ The selection of some features from a group of features originally disclosed in combination is allowable under Article 123(2) EPC if the selected and omitted features are neither structurally nor functionally linked. It is only when these conditions are met that the intermediate generalisation resulting from the selection can be considered allowable.” 
• “ In the absence, in the drawing and the corresponding portion of the description, of any indication as to the effects resulting from [the feature now recited in isolation in claim 1], it is impossible to recognise whether the conditions for selecting a feature from its context, recalled above, are fulfilled.”
• “A further consequence is that it is impossible for the skilled person to recognise what purpose is meant to be achieved by the selected features [i.e. now added in claim 1] in the context of the invention. They thus cannot be considered to be the deliberate result of technical considerations directed to the solution of the technical problem involved (cf. T 398/00, point 3.4). In the absence of any identified technical purpose justifying the features in question, their selection in claim 1 is purely arbitrary. Their introduction into claim 1 of the main request results only from the intention of defining an artificial difference with the prior art.”
• The claim does not comply with Article 123(2).
• As a comment, if amendments are based on technical considerations 'post hoc' this can of course also be a ground why the amendments do not comply with Article 123(2). 

EPO T 0886/15 -  link

decision text omitted.

T 2208/15 - Essential features lacking

 Key points

• This is an examination appeal about video compression. Claim 1 specifies: “a downsampling ratio that is determined in accordance with the size of the amount of transition inside the frame”.
• The Board's conclusion is that “to solve the technical problem which the application is concerned with, it is essential to increase the downsampling when the size of the amount of transition increases”
• “The feature of claim 1 stated above[...]  encompasses both the above-described case, where the downsampling ratio increases when the amount of transition increases, and the opposite case, where the downsampling ratio increases when the amount of transition decreases. ”
• Therefore, claim 1 does not comply with Art. 84 (EPC 1973) (EP entry in 2009).
• The Board infers the “technical problem which the application is concerned with” from various passages of the description.
• Hence, it does not seem to matter if the broader feature provides a technical effect and/or solves an objective technical problem, but whether the specific problems discussed in the application are solved by the recited claim features.
• Presumably, the application discloses the broader feature under Article 123(2) EPC. We don't know if the broader feature provides for an inventive step under Article 56 EPC. No prior art is discussed in the Board's decision.

EPO T 2208/15 - link

3.2 However, in the board's view the above-mentioned amended feature of claim 1 ("a downsampling ratio that is determined in accordance with the size of the amount of transition inside the frame") gives rise to a new objection under Article 84 EPC 1973 for the reasons set out below.

3.3 According to the established case law of the boards of appeal, Article 84 EPC 1973 has to be interpreted as meaning not only that a claim must be comprehensible from a technical point of view, but also that it must define the object of the invention clearly, that is to say indicate all the essential features thereof. All features which are necessary for solving the technical problem with which the application is concerned have to be regarded as essential features (see Case Law, II.A.3.2).

T 1801/17 - No obligation to attend

 Key points

• The opponent-respondent disputes the admissibility of a request filed with the Statement of grounds. 
• Turning to the auxiliary request filed with the statement of grounds: the Opposition Division found in the impugned decision an unallowable intermediate generalisation [...]. The Board notes that this objection was first raised by the opponent during the oral proceedings before the Opposition Division. It also formed the basis for revoking the contested patent [...] The Board considers the filing of the auxiliary request with the statement of grounds, in which the missing feature was added, as a legitimate response. The respondent-opponent submits that the patent proprietor might have been able to file this request at the end of the oral proceedings before the Opposition Division, had they attended. It would follow that the proprietor could have presented the request in first instance in the sense of Article 12(4) RPBA 2007 but they did not by choosing not to attend the oral proceedings. ”
• “The Board however notes that there is no legal obligation to attend the oral proceedings. In the present case, the proprietor dealt with all the outstanding objections during the written proceedings, including filing auxiliary requests aimed at overcoming the added subject-matter ones known at the time. This is a legitimate way of defending oneself against an opposition and does not suggest any intention to avoid a ruling on the matter at first instance. By proceeding in this way the proprietor did not forfeit the right to defend itself in appeal against objections that were only raised during oral proceedings.”
• For a Board finding an (equitable?) obligation to attend oral proceedings before the examining division, see T1500/10.
• The request filed with the SoG was resubmitted as AR-4a with a small amendment and was subsequently made the main request.
• The Board: “As auxiliary request filed with the statement of grounds, its admissibility is at the discretion of the Board under Article 12(4) RPBA. As auxiliary request 4a of 24 May 2019, filed before oral proceedings had been arranged, its admissibility is at the discretion of the Board under Article 13(1) and 12(4) RPBA 2007. As main request filed on 17 April 2020 after the arrangement of oral proceedings, its admissibility is subject to the Board's discretion under Article 13(3) RPBA 2007.”
• The admissibility of the request is examined cumulatively under said provisions.
• 
  

EPO T 1801/17 -  link

3. Main request - Admissibility

The respondent-opponent objects to the admissibility of the main request. This issue hinges also on the admissibility of other previously filed requests as follows.

3.1 The appellant-proprietor filed an auxiliary request with the statement of grounds. The later filed auxiliary request 4a on 24 May 2019 was based on that auxiliary request, and was amended only to adapt one term of claim 1 to a corrected translation. With letter of 17 April 2020, the appellant-proprietor made that auxiliary request 4a its main request.

As auxiliary request filed with the statement of grounds, its admissibility is at the discretion of the Board under Article 12(4) RPBA. As auxiliary request 4a of 24 May 2019, filed before oral proceedings had been arranged, its admissibility is at the discretion of the Board under Article 13(1) and 12(4) RPBA 2007. As main request filed on 17 April 2020 after arrangement of oral proceedings, its admissibility is subject to the Board's discretion under Article 13(3) RPBA 2007.

3.2 Turning to the auxiliary request filed with the statement of grounds: the Opposition Division found in the impugned decision an unallowable intermediate generalisation in the omission of the feature of original description paragraph [0033] that the guide wall has the shape of a plate curved in the shape of a circular arc, see section 2.3. The Board notes that this objection was first raised by the opponent during the oral proceedings before the Opposition Division. It also formed the basis for revoking the contested patent, see written decision sections 2.3 and AUXILIARY REQUESTS I-VI. The Board considers the filing of the auxiliary request with the statement of grounds, in which the missing feature was added, as a legitimate response.

The respondent-opponent submits that the patent proprietor might have been able to file this request at the end of the oral proceedings before the Opposition Division, had they attended. It would follow that the proprietor could have presented the request in first instance in the sense of Article 12(4) RPBA 2007 but they did not by choosing not to attend the oral proceedings. The Board however notes that there is no legal obligation to attend the oral proceedings. In the present case, the proprietor dealt with all the outstanding objections during the written proceedings, including filing auxiliary requests aimed at overcoming the added subject-matter ones known at the time. This is a legitimate way of defending oneself against an opposition and does not suggest any intention to avoid a ruling on the matter at first instance. By proceeding in this way the proprietor did not forfeit the right to defend itself in appeal against objections that were only raised during oral proceedings.

Under the above circumstances the Board considers the auxiliary request filed with the statement of grounds to be a normal and legitimate reaction of the losing patent proprietor at their first available opportunity, see CLBA V.A.4.11.3.g), and thus admissible under Article 12(4) RPBA 2007.

T 0225/19 - The SME appel fee declaration lacks legal basis

 Key points

• An appeal is filed by the joint proprietors, a university and a GmbH, paying the appeal fee at the reduced rate. The opponents dispute the admissibility of the appeal asserting that the GmbH is at least 75% owned, indirectly, by a large USA company. 
• This Board concludes that the 'SME Declaration' for the reduced appeal fee, prescribed in  EPO Notice OJ 2018, A5, lacks legal basis as a requirement for the reduced appeal fee (see also J8/18). As far as I know, this is the first time the Board explicitly says so. 
• This Board: “Der Beschluss des Verwaltungsrats vom 13. Dezember 2017 [OJ 2018, A4) zur Änderung der GebO bzw. der dadurch neugefasste Artikel 2 (1) Nr. 11 der GebO enthalten keine Rechtsgrundlage für die in Nr. 3 und 4 der Mitteilung verlangte Erklärung.” (emphasis added). 
• “Daraus folgt, dass die Mitteilung [OJ 2018, A5] durch das in deren Nr. 3 und 4 genannte Erfordernis einer Anspruchserklärung sowie den Hinweis auf die möglichen Rechtsfolgen in Nr. 11 der Mitteilung den Beschluss des Verwaltungsrats vom 13. Dezember 2017 (CA/D 17/17, supra) nicht nur auslegt und erläutert, sondern das zusätzliche, durch keine Rechtsgrundlage gestützte Erfordernis einer mit der Gebührenzahlung abzugebenden Erklärung aufstellt.”
• I note that in T 1060/19 the Board had assumed that the provisions of the Notice were binding, only to reject an argument of a party based on the principle of protection of legitimate expectations. Perhaps the intent of the additional requirement in the Notice was to protect parties. But in the end, the additional requirement in the Notice lacks any legal basis.
• However, the Board is competent to examine the entitlement to the fee reduction and obliged to examine this entitlement of a party when disputed by the other parties. Both the declaration and any evidence are still accepted after the appeal period.
• In this case, the evidence was not accepted and the Board decides that the appeal is deemed not to have been filed. The decision does not mention any request for re-establishment.

T 0225/19 - https://www.epo.org/law-practice/case-law-appeals/recent/t190225du1.html

EPO Headnote

Auch wenn eine Erklärung nach Nr. 3 und 4 der Mitteilung des EPA vom 18. Dezember 2017 nicht schon bei Zahlung der ermäßigten Beschwerdegebühr verlangt werden kann, ist die Kammer jedoch befugt und verpflichtet, die Voraussetzungen für die wirksame Einlegung und die Zulässigkeit der Beschwerde in jedem Verfahrensstadium zu prüfen. Eine Überprüfung durch die Kammer ist insbesondere dann geboten, wenn das Vorliegen der Voraussetzungen nach Regel 6 (4) und (5) EPÜ für die Zahlung der ermäßigten Beschwerdegebühr von anderen Verfahrensbeteiligten bestritten wird. Dabei werden eine entsprechende Erklärung und Belege auch noch nach Ablauf der Beschwerdefrist akzeptiert (vgl. Nr. 2 und 3 der Entscheidungsgründe).