T 1727/12 - No Biogen

Key points

• The concept of "Biogen sufficiency" is, according to the Board, not part of the established jurisprudence of the boards of appeal of the EPO. In any case, it is a matter of support under Article 84, not of insufficiency of disclosure under Article 83 EPC.
" The fact that the skilled person is aware of only one way of maintaining the tension (which it knows how to carry out) cannot possibly justify an objection under Article 100(b) EPC 1973."

EPO T 1727/12 - link

Reasons for the Decision

1. Sufficiency of disclosure

The opposition division distinguished between "classical insufficiency" and "Biogen sufficiency". It found the invention as exemplified in the patent specification to be disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.

It then considered the subject-matter of claim 1 and found that "the skilled person would not be able to carry out the invention without using the tension monitoring disclosed in claims 3 to 5" (Grounds for the decision, sheet 9, third paragraph). From this lack of "Biogen sufficiency" it concluded that claim 1 did not meet the requirements of Articles 100(b) and 83 EPC 1973.

1.1 Burden of proof

A principle intrinsic to EPO proceedings is that the party who raises an objection bears the burden of proving it (see "Case Law of the Boards of Appeal of the EPO", 7th edition, 2013, III.G.5.1.1). The application of this principle to opposition proceedings leads to the conclusion that the burden of proof in respect of the grounds for opposition raised by an opponent lies on the opponent. An opposition division may, in application of Article 114(1) EPC, of its own motion raise a ground for opposition not covered by the notice of opposition (see decision G 9/91 (OJ EPO, 1993, 408), point 16 of the reasons) or a fortiori raise new arguments in respect of a ground for opposition covered by the notice of opposition, but if it does so, it has to bear the burden of proof for its objections.

1.2 "Biogen sufficiency"

To the best knowledge of the board, the concept of "Biogen sufficiency" is not part of the established jurisprudence of the boards of appeal of the EPO and is not commonly used in EPO proceedings.

However, as an Internet search easily shows, the concept is well known in the UK. It has its origin in a decision handed down by the House of Lords

on October 31, 1996 (Biogen v. Medeva, [1997] RPC 1). This decision concerned the patentability of a biotechnology invention and mentioned, as an obiter dictum, that under Article 83 of the EPC, the EPO had jurisdiction "to hold a patent invalid on the substantive ground that, as the EPO said in Exxon/Fuel Oils (T 409/91) [1994] OJ EPO 653, para. 3.3., the extent of the monopoly claimed exceeds the technical contribution to the art made by the invention as described in the specification" (point 80 of the decision).

Decision T 409/91 states:

"... in the Board's judgment, in order to fulfil the requirement of Art. 83 EPC, the application as filed must contain sufficient information to allow a person skilled in the art, using his common general knowledge, to carry out the invention within the whole area that is claimed." (Reasons, point 2), and

"Art. 84 EPC also requires that the claims must be supported by the description, in other words it is the definition of the invention in the claims that needs support. In the Board's judgment, this requirement reflects the general legal principle that the extent of the patent monopoly, as defined by the claims, should correspond to the technical contribution to the art in order for it to be supported, or justified (see T 133/85, OJ EPO 1988, 441). This means that the definitions in the claims should essentially correspond to the scope of the invention as disclosed in the description. In other words, as was stated in Decision T 26/81 (OJ EPO 1982, 211, point 4 of the reasons), the claims should not extend to subject-matter which, after reading the description, would still not be at the disposal of the person skilled in the art. Consequently, a technical feature which is described and highlighted in the description as being an essential feature of the invention, must also be a part of the independent claim or claims defining this invention (see also Decision T 133/85, point 2 of the reasons)" (Reasons, point 3.3; it is this passage that is cited by Lord Hoffmann in Biogen v. Medeva)

As Lord Hoffmann's obiter dictum in Biogen v. Medeva expressly refers to the jurisprudence of the Boards of appeal, there was no need for the opposition division to invoke the concept of "Biogen sufficiency". When using this concept, the opposition division should at least have explained what exactly was meant, namely that the extent of the monopoly claimed ought not to exceed the technical contribution to the art made by the invention as described in the specification. The opposition division appears to have considered that claim 1 could not be said to be sufficiently disclosed within the whole scope of the claim because the only invention disclosed in the specification corresponded to the combination of claims 1 and 3 to 5.

1.3 First the board notes that the statement of decision T 409/91 cited in Biogen v. Medeva referred to the requirements of Article 84 EPC 1973 rather than to Article 83 EPC 1973 but then stated that "... since Art. 83 relates to the disclosure of the invention, whilst Art. 84 deals with the definition of the invention by the claims, the underlying purpose of the requirement of support by the description, insofar as its substantive aspect is concerned, and of the requirement of sufficient disclosure is the same, namely to ensure that the patent monopoly should be justified by the actual technical contribution to the art." (Reasons, point 3.3, fourth paragraph).

Case T 409/91 was an ex parte case, which means that the argument based on the common purpose of Articles 83 and 84 EPC 1973 is unproblematic, because an application can be refused for lack of compliance with each of Articles 83 and 84 EPC 1973. The present case, however, is an opposition appeal case, which means that it is necessary to clearly distinguish the requirements of Article 83 EPC 1973 (sufficiency of disclosure) and Article 84 EPC 1973 (clarity and support in the description). Lack of clarity and lack of support are not grounds for opposition under Article 100 EPC 1973 and cannot be transformed into such grounds by means of teleological considerations. It is, therefore, irrelevant to the present case whether claim 1 has sufficient support in the description; the only question to be raised under Article 100(b) EPC 1973 is whether the opposed patent discloses the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.

1.4 The opposition division has justified its dismissal of the main request as follows:

"The patent only discloses how to monitor the tension in the tape by monitoring the power supplied to the motors by monitoring the magnitude of current using a regulated power supply, since the patent does not give any technically enabling disclosure to use another method to monitor the tension in the tape and since claim 1 is claiming a controller operative to monitor tension in the tape without monitoring the power supplied to the motors (claim 3) by monitoring the magnitude of current (claim 4) using a regulated power supply (claim 5), the skilled person would not be able to carry out the invention without using the tension monitoring disclosed in claims 3 to 5. Moreover, there is no hint in the available prior art how to maintain the tension without contacting the tape. The only solution to maintain the tension for the skilled person would by the one above indentified (sic). The subject matter of claim 1 of the main request does not meet the requirements of articles 100(b) and 83 EPC." (Grounds for the decision, sheet 9, third paragraph; emphasis of the division).

1.5 The board is not persuaded by this reasoning of the opposition division, for the following reasons:

Claim 1 is directed at a tape drive. This drive comprises a controller which is inter alia operative to monitor tension in the tape and to control the motors to maintain the monitored tension between predetermined limits.

Claim 3 adds that the power supplied to at least one of the stepping motors is monitored and used to calculate an estimate of the tension of the tape, so as to monitor the tension of the tape.

Claim 4 further adds that the monitoring of the power is itself indirect, because the directly monitored quantities are the magnitude of voltage and/or current supplied to the motors and/or the motor drive means.

According to claim 5, a constant voltage is supplied to the stepper motor and what is monitored is the magnitude of current supplied to the stepper motor drive means.

The statement of the opposition division according to which "... claim 1 is claiming a controller operative to monitor tension in the tape without monitoring the power supplied to the motors (claim 3) by monitoring the magnitude of current (claim 4) using a regulated power supply (claim 5) ..." (emphasis added by the board) is not correct because claim 1 does not comprise any such disclaimer. Claim 1 simply does not state how the tension is monitored; it certainly does not exclude monitoring as described in claims 3 to 5.

The statement of the opposition division that "the skilled person would not be able to carry out the invention without using the tension monitoring disclosed in claims 3 to 5" may be correct, but is not sufficient to justify the conclusion of the opposition division that the skilled person is thus hindered from carrying out the invention. The argument would be correct if there clearly were other options than what is disclosed in the dependent claims or in the patent specification and if the skilled person would not know how to carry them out. This has, however, not been established by the opposition division - although it bore the burden of proof. The opposition division has presumed the existence of alternatives and the impossibility for the skilled person to carry them out. The objection, therefore, appears to be purely speculative and, as a consequence, unfounded.

The same holds true for the argument according to which there is no hint in the available prior art how to maintain the tension without contacting the tape. The fact that the skilled person is aware of only one way of maintaining the tension (which it knows how to carry out) cannot possibly justify an objection under Article 100(b) EPC 1973.

1.6 Thus the board has reached the conclusion that the opposition division has not established that claim 1 of the main request fails to comply with the requirements of Article 100(b) EPC 1973.

2. Remittal to the opposition division

In the present case the opposition division dismissed the main request exclusively for lack of compliance with Articles 100(b) and 83 EPC 1973 and left the other issues undecided.

Since proceedings before the boards of appeal are primarily concerned with the examination of the contested decision, remittal of the case to the opposition division in accordance with Article 111(1) EPC 1973 is normally considered by the boards in cases where the opposition division has issued a decision solely upon a particular issue and leaves substantive issues such as novelty (Article 54 EPC 1973) or inventive step (Article 56 EPC 1973) undecided.

The board, therefore, considers it appropriate to remit the case to the first instance for consideration of the undecided issues.

3. Request for oral proceedings

In its statement of grounds of appeal, item 4, the appellant has made the following statement:

"In the event that the Patent is not to be maintained in the form in which it was granted, the Proprietor requests oral proceedings."

The decision to remit the case to the opposition division for further prosecution does not imply that the patent will not be maintained as granted. According to the established jurisprudence of the boards of appeal, the appellant is not adversely affected by this decision, so that there is no need to grant the auxiliary request for oral proceedings (see "Case Law of the Boards of Appeal of the EPO", 7th edition, 2013, III.C.2.5, in particular decision T 42/90).

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the opposition division for further prosecution.