T 0389/13 - An unwarranted advantage

Key points

• Patenting olefin polymer compositions is a world of its own because the claims often consist (like the one at issue) of a quite general chemical feature (" A polyethylene composition") followed by a number of parameters for the achieved properties.
•  The Board finds the combination of parameter of claim 1 at issue to lack basis. The Board makes an interesting connection between Article 123(2) EPC and selection inventions of third parties. 
• " Allowing those various restrictions without there being any - even implicit - indication in the application as filed that the specific combination of newly introduced parametric ranges [] was envisaged would be unfair to third parties. It would give an applicant [] who filed a broad speculative claim an unwarranted advantage over other applicants who were the first to attribute any significance to a specific combination of parameters and their ranges of values encompassed by said broad original claim, as such type of selection invention is in principle patentable and even rather usual in the present field of technology. " 

EPO T 0389/13 -  link

3.8 The underlying idea of Article 123(2) EPC is that an applicant or patent proprietor shall not be allowed to improve his position by defining subject-matter not disclosed in the application as filed, since so doing would give him an unwarranted advantage and could be damaging to the legal security of third parties relying on the content of the original application (G 1/93, OJ EPO, 1994, 541, point 9 of the reasons for the decision).

3.9 The polyethylene composition of claim 1 was defined on filing in a broad manner, its definition including a few structural features (a LMW ethylene homopolymer and a HMW ethylene copolymer) resulting in a bimodal molecular weight distribution, as well as two ranges of parametric values (polydispersity of the LMW component and ductile-brittle transition temperature Tdb of the overall composition), with an indicationin the rest of the application as filed ofpreferences for said structural features and a definition of additional parameters which might be used to characterize the composition, a well as corresponding ranges of values. Subsequently introducing some limits into claim 1 on the basis of said preferences or on the basis of said additional parameters and corresponding ranges of values for the purpose of overcoming grounds of opposition based on prior art revealed in proceedings before the EPO, is allowable in view of the requirements of Article 123(2) EPC subject to the condition that the application as filed reveals, at least implicitly in a direct and unambiguous manner the resulting specific combination of features.

3.10 Allowing those various restrictions without there being any - even implicit - indication in the application as filed that the specific combination of newly introduced parametric ranges and of amended restricted ranges was envisaged would be unfair to third parties. It would give an applicant or a patentee who filed a broad speculative claim an unwarranted advantage over other applicants who were the first to attribute any significance to a specific combination of parameters and their ranges of values encompassed by said broad original claim, as such type of selection invention is in principle patentable and even rather usual in the present field of technology. The underlying principle is that any invention for which protection is sought, i.e. in the specific form claimed, and which therefore is meant to provide a contribution to the art justifying a patent monopoly must have been made at the date of filing the application and be properly disclosed therein. As indicated in point 2.3.3 of the reasons for G 1/03 (OJ EPO, 2004, 413) "applicants deal with the state of the art of which they are aware (see Rule 27(1)(b) EPC)" (now Rule 43(1)(b) EPC) "and try to delimit the invention against it. For any further state of the art of which they are not aware, they draft fall-back positions for preferred (and more preferred) embodiments. In this way the invention as set out in the specification may appear like the skins of an onion and it becomes clear where the core of the invention is." Amending the subject-matter to addressobjections raised in view of prior art documents revealed in proceedings before the EPO is acceptable as long as a corresponding fall back position can be considered to be disclosed in the application as filed. In the present case, the application as originally filed did not contain any fall-back position on the basis of which the combinations of parametric ranges as presently claimed might be considered to be disclosed.

3.11 Accordingly, the patent proprietor, on which the burden of proof in demonstrating that an amendment carried out in opposition appeal proceeding does not add subject-matter lies (see Case Law, supra, II.E.5), could not convince the Board that claim 1 of the main request meets the requirements of Article 123(2) EPC. The main request is therefore not allowable.