T 1132/20 - A cloud-computing provider's non-technical business decision

Key points

• As for difference (a), although document D3 does not disclose any other "middleware function" such as firewall or encryption/decryption functionality, these types of functionality are well known in the art. In the context of document D3, a cloud-computing provider's decision to provide such functionality on an optional basis and configured in accordance with the tenants' individual preferences (as negotiated in per-tenant policy agreements or "contracts") is a non-technical business decision.
• It's been a while since we saw the CardinalCommerce business person on this blog. Apparently, he/she/they moved on from insurance, gambling and tax advice to cloud computing services. 
• "the problem-and-solution approach as developed in the case law of the board of appeal is not a mechanistic tool for assessing inventive step but should rather be seen as a useful framework which can help answering in an objective manner the question whether, having regard to the state of the art, the skilled per son could and would have arrived at the invention. The problem-and-solution approach must be applied having in mind the purpose of Article 56 EPC, which is to prevent a patent from being granted on routine or otherwise obvious modifications of what, at the effective filing date, had been available to the public. "

EPO 

The link to the decision can be found after the jump.

R 0008/19 - Objective technical problem, length of review procedure

Key points

• "In the present case, a cornerstone of the Board's inventive step reasoning [in T1537/16]  with respect to claim 1 of auxiliary request 1 was the construction of the objective problem solved by the claimed subject-matter. In line with its reasoning concerning the main request, the Board did not follow the proprietor's view that the objective problem consisted of the provision of an improved pharmaceutical formulation with reduced variability in its pharmacokinetic parameters, since it considered that a corresponding effect had not been demonstrated. But it also did not follow the petitioner's view that the problem was merely the provision of an alternative tablet. Instead, it considered that the objective problem solved was the provision of a pharmaceutical formulation with a zero order release profile."
• The TBA on the main request: The TBA could not follow the argument of the proprietor that "the eroding matrix of claim 1 of the main request necessarily provides a zero order release profile, which is not the case of D1". "An eroding matrix is not necessarily a matrix with a zero order release. Said term is not necessarily connected with specific release properties, it only defines a way of releasing by slow dissolution". The Technical Board also found that the dosage form of example 16 of D1, with a matrix system and a water-insoluble rate-controlling polymer, inherently provided an eroding matrix.
• The TBA on auxiliary request 1: "contrary to claim 1 of the main request which referred generally to a "rate-controlling agent" [of the erosion matrix, I understand], claim 1 of auxiliary request 1 has been restricted to a water-soluble rate-controlling polymer". "it is clear that the distinct nature of the rate-controlling agent shows an effect on the release of the fumaric acid ester from the core tablet. Accordingly, the technical problem is the provision of a pharmaceutical formulation showing a zero order release."
• The Enlarged Board: "The question arises, whether the Board's reliance on an objective problem that was never mentioned to the petitioner amounts to a fundamental violation of the right to be heard. In the Enlarged Board's view, this question cannot generally be answered in the affirmative. The application of the problem-solution approach can be viewed as a method of determining and reasoning whether a claimed invention fulfils the requirement of inventive step (Articles 52 and 56 EPC). "
• "For the reasons given below, the Enlarged Board comes to the conclusion that the Board based its decision only on grounds that were objectively foreseeable by the parties, in view of their submissions and the Board's statements during the appeal proceedings. During the entire proceedings leading to the decision under review, the zero order release profile - the provision of which was eventually adopted by the Board as the objective technical problem - was discussed, either as a quality of the erosion matrix or as a feature that was desirable per see."
• Follows a detailed analysis of the facts of the specific case in points 19 - 27.
• "Under these circumstances, it could not be surprising that the Board connected the additional limiting feature of claim 1 of auxiliary request 1 ("wherein the rate-controlling agent is a water-soluble polymer") with the generally acknowledged advantages of a zero-release profile, which profile was also set out for examples 18 and 22 in Figure 1 of the patent."
• The Enlarged Board also includes a general remark: "In the context of the problem-solution approach, there should normally have been a discussion on the relevant prior art, the differences between the prior art and the claimed invention, and the technical relevance of these differences. Within the framework of what has been addressed in the course of these discussions, the deciding organ should be free to apply the problem-solution approach as it sees fit, and even identify an objective problem that has not been explicitly spelled out as such during the proceedings. In any case, the objective problem eventually used in the reasoning has to be based on technical effects (or the lack of any) and the features of the invention causally linked to such effects, upon which the parties had an opportunity to comment."
  
  
• The decision in case R 8/19 was issued in writing on 20.09.2024. The decision was taken on 12.04.2024. The petition for review was filed on 25.09.2019, so the Enlarged Board took five years (minus a few days) to decide on the case. The decision was taken by a five-member panel.  
• The Enlarged Board also needed more than three months to issue the decision, but Art. 15(9) RPBA has no counterpart in the RPEBA.
• At the time of writing, R12/20 is still awaiting the written decision, and three petitions that were filed in 2021 are still pending. It seems the Enlarged Board is clearing up a (corona-induced?) backlog. 
• The application was filed as a PCT application in 2010. The overall length of the procedure was 14 years. 
• No interruption of the procedure is visible in the Register (Rule 143(1)(t) EPC).

EPO 

The link to the decision and an extract of it can be found after the jump.

J 0003/24 - Late FP request granted

Key points

• "The present application EP 22 155 454.6 was filed on 7 February 2022. The examination and designation fees were due on 10 February 2023 (Friday). These fees were paid on Monday 13 February 2023. By letter of 12 February 2023, the appellant's representative requested that the payment be considered as being on time, as he had assumed that he had given an automatic debit order at the time of taking over representation from the previous representative, but on checking the deposit account on 12 February 2023 it turned out that this was not the case."
• Note, 'due' is here not used in the EPC sense of the first day a fee can be paid validly (Visser's Annotated EPC, 2024, page 855). 
• The Receiving Section allowed the appeal. As the decision is not reasoned, we don't know why.
• "On 21 February 2023, a notification of loss of rights pursuant to Rule 112(1) EPC was sent undated, and was sent again on 7 March 2023, informing the appellant that the application was deemed to be withdrawn because the examination fee and the designation fee had been paid after expiry of the prescribed period for payment. The notification indicated as available means of redress a request for a decision under Rule 112(2) EPC, a request for further processing under Article 121 EPC and a request to consider the fee to have been paid in due time under Article 7(3), (4) Rules relating to Fees (RFees), each with a two-month time limit for filing. 
• IV. On 1 June 2023, the appellant submitted an enquiry regarding his request of 12 February 2023."
• " By a communication of 22 June 2023, the appellant was informed that no valid request for further processing had been filed as the relevant fee had not been paid in due time. "
• "By letter of 29 June 2023, the appellant reiterated his request that the payment of the fees be considered as having been made in time. He explained that he had not interpreted the notification of loss of rights as a reaction to his request filed on 12 February 2023, but as an automatically generated letter. As an auxiliary request he claimed further processing and requested that the required fees be debited from his deposit account."
• Interestingly enough, for some reason, the FP request of 29 June 2023 was apparently granted in appeal by the Receiving Section by interlocutory revision.
• The Legal Board: " In the present case, it must be conceded to the appellant that the notification of loss of rights of 21 February / 7 March 2023 according to Rule 112 EPC made reference to the late payment but did not expressly address the appellant's request of 12 February 2023 for the late payment to be considered as having been made on time. From an objective point of view, it was therefore not clearly apparent whether the Receiving Section had taken this request into account in its communication.
However, on an objective basis and under the present circumstances, it was not reasonable for the appellant to completely disregard this communication. Even if the appellant's representative had considered the notification as having been generated automatically without taking into account the request of 12 February 2023, it is expected that communications from the European Patent Office will be observed. The present notification pointed out the legal remedies available to overcome the loss of rights caused by the late payment of the examination and designation fees and, in particular, indicated the time limit for filing a request for further processing (Article 121 EPC, Rule 135(1) EPC). Such an official communication cannot simply be ignored and set aside. Rather, it was the appellant's own responsibility to enquire about the situation regarding his request of 12 February 2023 before expiry of the triggered time limits in order to ensure that he did not suffer any loss of rights. The fact that he only contacted the Receiving Section on 1 June 2023 must be attributed solely to the appellant."
The appellant could also have requested a decision under Rule 112 on whether the notice of loss of rights was correct; suitably with an auxiliary request for further processing.
• However, the Receiving Section granted the FP request in interlocutory revision, and that decision stands. 
• The request for reimbursement of the appeal fee is rejected.

•  

 

 

 

EPO 

The link to the decision and an extract of it can be found after the jump.

J 0004/23 - Getting on the list without passing the EQE (not)

Key points

• "The requestor (the appellant) asked to be entered on the list of professional representatives before the EPO. He addressed the Vice-President in charge of the Directorate-General for Legal and International Affairs (VP5) and requested an exemption from the requirement of passing the European Qualifying Examination (EQE) as set out under Article 134(2)(c) EPC [i.e. the EQE]. For his request, he relied on the following information published on the EPO's website at the time of the request (emphasis added): "... in accordance with Article 134(7) EPC, the Vice-President in charge of DG5 is entitled to grant exemption from requirements (a) and (c) of Article 134(2) EPC (see Decision of the President of the EPO dated 1 December 2011 delegating his powers to decide on requests for exemption from requirements for entry on the list of professional representatives, OJ EPO 2012, 13)".

• IV. In reply, VP5 informed the requestor that the erroneous information on the website had been rectified but that the request for an exemption could not be granted since there was no possibility of being exempted from having to pass the EQE other than the so-called grandfather clause under Article 134(3) EPC, which was not applicable to the requestor's case."

• After some back and forth, the requester is at the Legal Board. T" The appellant further submitted that it was he who had found this "crack" in the system and that he should therefore be able to benefit from it. The "crack" had also been closed since as the EPO had removed the information from its website, so there was no danger for the EPO that anybody else could claim an exemption in the future. But in his case, he could rely on what had been stated on the website when he had filed his request for an exemption."

• The Board dismisses the appeal.

• "The facts of the case are not disputed. The appellant has not passed the European qualifying examination (EQE). He also confirmed during the oral proceedings that there was no legal basis in the EPC under which the EPO could grant an exemption from the requirement under Article 134(2)(c) EPC to pass the EQE for being entered on the list of professional representatives. Indeed, no such legal basis exists.

  The appellant also confirmed at the oral proceedings before the Board that he relied solely on the principle of legitimate expectations, also called the principle good faith, for his main request."

• "As set out above under point 2., the principle of legitimate expectation is not unrestricted, and it is inherent in the principle that a person can only successfully invoke an expectation on which they could, on an objective basis, legitimately rely. It must be established that, on an objective basis, it was reasonable for a requestor to have been misled by the information on which they relied, here the information of the EPO's website. The appellant has not sufficiently and convincingly demonstrated in his favour that this is the case."

As a comment, I'm not 100% sure if getting on the list without passing the EQE should not be ruled out a priori (except for cases of new contracting states acceding to the EPC under  Article 134(7) EPC). 

•  After some analysis: "Hence, even if the appellant had the expectation that an exemption for the requirement set out in lit. (c) of Article 134(2) EPC could be granted, this expectation was not legitimate."
  
  
• "The principle of the protection of legitimate expectations

• 2. The principle of the protection of legitimate expectations is well established in proceedings before the EPO. This is also made clear in the decisions referred to by the appellant (see above point VII., in particular the decisions of the Enlarged Board of Appeal G 2/97, G 5/88 and G 5/93). It is thus not necessary to invoke, as the appellant did, further legal principles, such as legal certainty or the rule of law, in support of the principle's existence.

  However, the principle of the protection of legitimate expectations does not give a carte blanche to the person relying on it. Rather, it is subject to several limitations (see in general Case Law of the Boards of Appeal, 10th edition 2022, III.A.2.2). First and foremost, not any expectation held by a person is automatically a legitimate one within the meaning of this principle. Whether an expectation is legitimate must be assessed by applying the principle to the facts of the case and, depending on the circumstances of the case, the relief sought may or may not be granted.

  It is therefore inherent in the principle of the protection of legitimate expectations that a person can only successfully invoke an expectation on which they could, on an objective basis, legitimately rely. As put by the Enlarged Board in G 2/97, the erroneous information from the EPO must objectively justify their conduct (G 2/97, Reasons 4.1, citing T 460/95). Therefore, it must be established that, on an objective basis, it was reasonable for the appellant to have been misled by the information on which he relied (see also J 27/92, Reasons 3.2; on the requirement to know the relevant legal provisions, see J 10/17, Reasons 3.3)."

EPO 

The link to the decision and an extract of it can be found after the jump.

T 1813/22 - The disappearing commercial device

Key points

• The preliminary opinion in G 1/23 proposes that commercially available products will be deemed to be enabled.
• The Board, on suficiency: "According to the last feature of claim 1 (M1.13), the formation value is to be determined according to a method set out in the description, notably in paragraph 43 of the patent. Accordingly, this method should make use of a specific apparatus ("Paper PerFect Formation Analyzer Code LPA07" manufactured by OPTEST Equipment Inc.) and of a specific test procedure outlined in section 10.0 of its operation manual ("LPA07_PPF_Operation_ManuaI_004.wpd 2009-05-20")."
• "As argued by the respondent, at the filing date of the patent this specific apparatus was seemingly available and so was presumably its manual of operation. The Board however cannot agree with the respondent's conclusion that for this reason the invention defined in claim 1 meets the requirement of sufficiency of disclosure (see point 8 of the respondent's reply to the appeal grounds). Such conclusion could only be confirmed if the apparatus mentioned in the cited paragraph as well as the manual were available over the entire lifespan of the patent (see for example Reasons 3.3 of T 1714/15)."
• "In the present case, the specific machine referred to in paragraph 43 of the patent as well as its operation manual containing the information necessary to perform the test according to its section 10.0, are undisputedly no longer available"
• The appeal decision was taken about 10 years after the filing date.
• Now, as a question, is this patent application enabling as prior art? Was it at the publication date of the patent application?
• How about the EP application as a prior right under Art.54(3) ? 
• "The Board therefore confirms its provisional opinion set out in its communication under Article 15(1) RPBA and concludes that the ground for opposition pursuant to Article 100(b) EPC prejudices maintenance of the patent."

EPO 

The link to the decision and an extract of it can be found after the jump.

Will we get an on sale bar in G 1/23?

Key points

• A few quotes from the observations of the President of the EPO, dated 15.10.2024:
• "Prior art should be understood broadly and Article 54(2) EPC does not make any distinction between products sold or otherwise available on the market, natural substances, documents, or any other disclosure."
• "Should the decision of the EBoA follow the preliminary opinion, the current practice would need to be revised, by differentiating the assessment of products and naturally occurring substances on the one hand, and documents, on the other."
  
  
• "Products available on the market or naturally occurring substances are part of the state of the art with all their properties, i.e. in the specific form in which they were put on the market and in which they are readily available."
• Compare recent decision T2510/18, which found a claim directed to a naturally occurring compound to be novel over a man-made plant extract containing that compound.
• Perhaps the EPO's analysis is to be read as: "Products available on the market or naturally occurring substances are part of the state of the art with all their properties, i.e. in the specific form in which they were put on the market respectively in which they are readily available [in nature]."
  
  
• The following observations of the President are likely restricted to the case of products available on the market or naturally occurring substances: 
• "“Enablement” or “reproducibility” in the sense as derivable from G 1/92, i.e. understood in the same way under Article 54 EPC as under Article 83 EPC, finds no legal basis in the EPC."
• "requiring “enablement” or “reproducibility” to confirm prior art status, finds support neither in the literal meaning of Article 54(2) EPC, nor in the system of the EPC, nor in the preparatory works for the Convention."
• "requiring prior art to be disclosed in an enabling manner would remove from the state of the art practically “anything under the sun”." 
• Cf. the US Supreme Court in Diamond v. Chakrabarty, 447 U.S. 303 (1980) (about patenting a genetically engineered, i.e. human-made, bacteria]: "The Committee Reports accompanying the 1952 Act inform us that Congress intended statutory subject matter [under 35 U.S.C. 101] to "include anything under the sun that is made by man.""
  
  
• "The purpose of the requirement of sufficiency of disclosure under Article 83 EPC is to exclude hypothetical or speculative applications, which cannot be put into practice."
• "For a product on the market this  requirement [i.e. Art.83] is of no relevance, because the product exists and therefore it cannot be hypothetical or speculative"
• I recall that the primary purpose of Article 83 EPC is to deal with cases where the inventor can carry out the invention but would like to keep it a secret and obtain a patent. In particular, Article 83 EPC prevents strategies of proprietors that attempt to provide that after the expiry of a patent (e.g. on a product), the proprietor can still have a de facto monopoly as the sole supplier of the invention on the market based on their trade secrets (e.g., the preparation method for that product; unless and until someone independently invents the same invention).
  
  
• "Accordingly, non-reproducible products which are available on the market (or in nature) belong to the state of the art, including all their analysable properties and features, e.g. their composition."
• "non-analysable features" are also possibly part of the prior art, according to the observations: "As regards non-analysable features of a prior art product, excluding them from prior art might lead to similarly problematic results as excluding readily available products from prior art by creating a legal fiction that features which were present in a readily available product do not belong to the state of the art because they could not be analysed at the relevant date. ... Such a legal fiction would ignore the fact that a product was available on the market with all its features and might open the possibility to patent products which have already been put on the market.
  
  
• Hence, G 1/23 could cause an upheaval of the case law on novelty and enablement, and prior art in general (also for Article 56 EPC). 

EPO 

The link to the document is after the jump.

T 2510/18 - Traditional knowledge, alleged biopiracy, and novelty of natural products

Key points

• Article 53 EPC
•  The Board, in translation: "in the early 2000s, the respondent [proprietor] conducted research on traditional anti-malarial remedies among the populations of French Guiana. As part of this project, a survey was conducted in 2001. 117 people from different communities in French Guiana responded to this questionnaire. The traditional remedies used for the treatment of malaria were collected. The project led to the identification of 45 curative recipes involving the use of 27 species of plants. The researchers studied these traditional remedies and subsequently focused their efforts on studying the plant Quassia amara. As a result, the researchers managed to identify an anti-malarial molecule, SkE."
• The molecule is now claimed: claim 1 is a compound claim directed to the molecule SkE.  
• "These observations [submitted by the appellants/opponents] were not contested by the respondent [proprietor] and can therefore be considered as facts."
•  "As indicated by the respondent [proprietors] , none of the appellants' allegations concern the commercial exploitation of the invention, a prerequisite for concluding that the invention would be excluded under Article 53 EPC."
• " the commercial exploitation of this molecule, of the drug containing it and of its isolation process is not contrary to morality, good customs or public order. On the contrary, there is a great need for drugs against malaria, and finding new antimalarial drugs is a mission whose aim is to treat populations at risk and save lives."
• "In the present case, the original development of the invention and the historical process by which the SkE molecule was discovered and isolated have no relevance to the commercial exploitation of the present claims, which require only the isolation of SkE from the plant Quassia amara and its administration to patients. The development of an invention is therefore distinct from its commercial exploitation once it has been achieved."
• "even if the respondent's conduct during the discovery and development of the invention as described by the appellants above were considered to be contrary to good morals and public policy, this does not concern the commercial exploitation of the invention, and therefore does not constitute a reason to exclude the claimed invention from patentability under Article 53(a) EPC."
• I refrain from adding comments on this point of the decision. 
• 
  
• Novelty of natural products
• Claim 1 recites the molecule. I understand that the molecule as such is present in the leaves or stems of a particular plant, Quassia amara. The claim does not recite 'isolated' or 'purified', only the structural formula of the molecule. Is it novel? 
• EPO Guidelines, G-II,3.1 "To find a previously unrecognised substance occurring in nature is also mere discovery and therefore unpatentable. However, if a substance found in nature can be shown to produce a technical effect, it may be patentable. An example of such a case is that of a substance occurring in nature which is found to have an antibiotic effect."
• Here, implicitly, "patentable" means not excluded by Article 52(2), novel and inventive, in combination. Hence, the Guidelines here kind of say that there are no novelty issues on the ground that the compound, as such (and as claimed), existed in nature before. In particular, "it", i.e. the substance, may be patentable, not only the method or use wherein the technical effect is achieved. 
• I'm looking for the EPO case law that supports the statement in the Guidelines.
• Of course, the German decision is BPatG 28.07.1977, 16 W (pat) 64/75, GRUR 1978, 238 Antamanid (no open access copy known to me): "Aber selbst wenn der beanspruchte Stoff Antamanid nachweisbar als solcher in der Natur vorkommen würde, stünde diese Tatsache einer Patentierung nicht entgegen." "Das beanspruchte Antamanid ist neu. Geht man von der Identität des beanspruchten Antamanids und dem im grünen Knollenblätterpilz enthaltenen Stoff als, so steht dieser Umstand der Neuheit der vorliegenden Erfindung nicht entgegen. Nach § 2 PatG gilt eine Erfindung nicht mehr als neu, wenn sie zur Zeit der Anmeldung in öffentlichen Druckschriften bereits derart beschrieben oder im Inland bereits so offenkundig benutzt ist, daß danach die Benutzung durch andere Sachverständige möglich erscheint. [this is the old German law] Am Anmeldetag war aber kein Sachverständiger in der Lage, das cyclische Dekapeptid Antaminid mit der in Anspruch 1 angegebenen Formel zu benutzen. Ihm war der Stoff als solcher und erst recht dessen wertvolle Eigenschaft, nämlich die Wirkung einer absolut tödlichen Dosis Phalloidin aufzuheben, unbekannt, Die Tatsache der Existenz dieses Stoffes in der Natur ist aber für sich genommen noch kein neuheitsschädlicher Umstand, sofern nicht die Kenntnis des Durchschnittsfachmanns von dieser Existenz hinzukommt. Nur ein öffentlich zugänglicher Naturstoff ist im Sinne des Gesetzes nicht mehr neu." . 
• I would be grateful to learn about the corresponding decision of the Technical Boards of Appeal.
• The court in the Antamanid case referred to the identical sentence in the first edition of the EPO Guidelines. 
• "Documents D2, D3 and D5 therefore do not explicitly disclose the SkE molecule or SkE in combination with other compounds. Rather, these documents disclose traditional antimalarial remedies, i.e. preparations derived from the leaves or stems of a particular plant, Quassia amara."
• 3.14: "even if one accepts the presence of SkE in the extracts of D2, D3 and D5, and even interpreting the scope of claim 1 in the broadest possible manner, as the applicants argue, for example to include the plant Quassia amara and its extracts disclosed in D2, D3 and D5, a direct and unambiguous disclosure of the technical features of claim 1, or even of the SkE molecule alone or in combination with other compounds, is still necessary to conclude a lack of novelty. 
•  See also point 4.4.2: " Although the scope of claim 1 may include preparations as set out above,"
• "There is no question of implicit disclosure of the SkE molecule or its combination with other compounds in these documents either. According to the consistent case law of the Boards of Appeal, a prior art document destroys the novelty of the claimed subject-matter if it follows directly and unambiguously from that document, including features implicit for the person skilled in the art. However, an alleged disclosure can only be considered "implicit" if the person skilled in the art immediately recognizes that nothing other than the alleged implicit feature is part of the disclosed subject-matter ... This situation does not apply to the SkE molecule and its combination with other compounds."
• "The fact that the SkE molecule may be contained in the extracts of D2, D3 and D5 does not amount to an implicit disclosure either. According to the decision of the Enlarged Board of Appeal in G 2/88 (points 10 and 10.1 of the Reasons), the question is what has been made available to the public, not what could be inherently contained in what has been made available to the public. Even if that decision concerned a use, the same applies in the present case: the presence of the SkE molecule in the leaves of Quassia amara or their decoction has not been made available to the public by the extracts of D2, D3 or D5."
• G 2/88 was about second non-medical uses. However, the remark is there in point 10.1 - imprecise in my view: "the Enlarged Board would emphasise that under Article 54(2) EPC the question to be decided is what has been "made available" to the public: the question is not what may have been "inherent" in what was made available (by a prior written description, or in what has previously been used (prior use), for example). Under the EPC, a hidden or secret use, because it has not been made available to the public, is not a ground of objection to validity of a European patent. In this respect, the provisions of the EPC may differ from the previous national laws of some Contracting States, and even from the current national laws of some non-Contracting States. Thus, the question of "inherency" does not arise as such under Article 54 EPC. Any vested right derived from prior use of an invention is a matter for national law (see, in this connection, e.g. Article 38 of the Community Patent Convention, not yet in force).". 
• Note, indeed 'secret prior use' is no prior art. That, however, is not very relevant to the issue of novelty of a second non-medical use claim over a public prior use of a method (with the same method steps) as at hand in G2/88, nor to the public prior use of the extracts for treating malaria in the case at hand. The EBA's term 'hidden prior use' is unclear to me, I'm unaware of a legal definition of it.
• In my view, at least for product claims and method claims, it is  relevant "what may have been "inherent" in what was made available (by a prior written description, or in what has previously been used (prior use), for example)."
• Thanks to the IP Kat comment: "Lord Hoffman's comments in Merrell Dow Pharmaceuticals Inc v HN Norton & Co Ltd [1995] UKHL 14 (26 October 1995): 
  "There is an infinite variety of descriptions under which the same thing may be known. Things may be described according what they look like, how they are made, what they do and in many other ways. Under what description must it be known in order to justify the statement that one knows that it exists? This depends entirely upon the purpose for which the question is being asked. Let me elaborate upon an example which was mentioned in argument. The Amazonian Indians have known for centuries that cinchona bark can be used to treat malarial and other fevers. They used it in the form of powdered bark. In 1820, French scientists discovered that the active ingredient, an alkaloid called quinine, could be extracted and used more effectively in the form of sulphate of quinine. In 1944, the structure of the alkaloid molecule (C20H24N2O2) was discovered. This meant that the substance could be synthesised. 
  Imagine a scientist telling an Amazonian Indian about the discoveries of 1820 and 1944. He says: "We have found that the reason why the bark is good for fevers is that it contains an alkaloid with a rather complicated chemical structure which reacts with the red corpuscles in the bloodstream. It is called quinine." The Indian replies: "That is very interesting. In my tribe, we call it the magic spirit of the bark." Does the Indian know about quinine? My Lords, under the description of a quality of the bark which makes it useful for treating fevers, he obviously does. I do not think it matters that he chooses to label it in animistic rather than chemical terms. He knows that the bark has a quality which makes it good for fever and that is one description of quinine."
• Incidentally, I believe there were indeed some national laws in Europe that at one time considered even secret prior use to be part of the state, but I would have to find a source for more details.
• In my article in EPI Information 2020/4, I wrote that "it is established case law that the ‘falling within’ test for lack of novelty can be satisfied based on inherent features of the prior art subject-matter", footnote: "T 12/81 hn.1, see e.g. also T 680/00, r.3. The exceptions are, of course, the special rules for first and second medical uses of Art. 54(4) and (5) EPC 2000, and the special rule for second non-medical use claims of G 2/88; however, these exceptions could also be seen as special rules for claim interpretation (cf. T 308/17, r.7). The remark in G 2/88, r.10.1 that ‘the question of “inherency” does not arise as such under Article 54 EPC’ is probably restricted to use claims as considered therein."
• T12/81, point 6 of the reasons: "If inventions relating to chemical substances defined by claims of this kind are patented, it necessarily follows that the resulting patent documents, once they enter the state of the art, will be prejudicial to the novelty of applications claiming the same substance although in a different and perhaps more closely defined form. This is the case with the present application."
• The present Board does not seem to be of the view that  G 2/88, r.10.1  is limited to use claims.
• Note that the Board expressly states that the claim is novel even if understood as covering "the plant Quassia amara and its extracts" (such extracts undisputedly being known from D2, D3 and D5) (point 3.14; see also point 4.4.2. Hence, the claim covers extracts that were described in scientific articles, e.g. D2: M. Vigneron et al., Journal of Ethnopharmacology 98 (2005), 351-360. These extracts are now patented.
• "D2 is an article that describes a study of antimalarial remedies used in French Guiana. The study found that the most commonly used species was Quassia amara alone or in combination with other plant species [...]. D2 describes that this plant is used in the form of decoctions [i.e. extracts] in water". 
• Hence, D2 discloses technical teachings about the plant and the extract and how to use it in a practical manner. It does not seem that the inventor of the patent discovered the plant or found a practical, technical use for the plant or a use of the extract from it. 
• I believe that in the Antamanid case, there was no known technical use of the poisonous mushroom (death cap) from which it was isolated. 
• Also, the court in that case did not explicitly state that the claim (reciting the compound as such) covered the mushroom. The court held that it could leave open the question of whether "eine ausdrückliche Beschränkung des Stoffanspruchs [to synthetic compounds] unnötig ist, weil es sich von selbst verstehen könnte, daß unter den Schutz des Patents nie das Naturvorkommen als solches fällt, kann hier wegen der mangelnden Nachweisbarkeit der Identität beider Stoffe unentschieden bleiben. Die Regelung im britischen Patentgesetz in Art. 4 Abs. 7 deutet in die Richtung, daß chemische Stoffe, die in der Natur als solche vorkommen, nicht unter das Patent fallen."
• The Board: "SkE was not disclosed in Documents D2, D3 and D5, and the molecule was not made available to the public through the use of Quassia amara leaves to prepare remedies disclosed in those documents."
• 
  
• On inventive step: "Although the scope of claim 1 may include preparations as set out above, the technical features of the claim relate to a specific compound. Therefore, the objective technical problem must also include the provision of a compound. Furthermore, as stated by the respondent, and not disputed by the appellants, the SkE molecule has low toxicity"
• "The objective technical problem can therefore be formulated essentially as proposed by the respondent, namely to provide a specific compound, or a preparation comprising a specific compound having good antimalarial activity and low toxicity. "
• The Board's review of inventive step is then quite detailed and fact-specific.
• "Therefore, the subject-matter of claim 1 involves an inventive step."
• "The same conclusion applies to claims 2 to 6, which depend on claim 1 and relate to a medicament comprising the SkE molecule"
• Claim 3 is a second medical use claim, in translation: "Medicament according to claim 2, for its use in the prevention and/or treatment of malaria". Claim 2 specifies "Medicament comprising the molecule of formula I according to claim 1 and a pharmaceutically acceptable carrier."  Depending on the interpretation of the claim term  "a pharmaceutically acceptable carrier", claim 3 could possibly cover exactly the already known use of the aqueous extracts of the plant to treat malaria, as known e.g. from D2 - which describes the traditional knowledge.

EPO 

The link to the decision and an extract of it can be found after the jump.