T 1471/14 - From product claim to use claim: extension

Key points

• The Board finds the following amendment of granted claim, from a product to a use, to violate Article 123(3) EPC, because the scope of protection is extended:
  " Use of a [deleted: A] liquid [deleted: human milk fortifier] composition comprising from 15% to 45% by weight of protein [] as a human milk fortifier for providing nutrition to preterm infants, wherein in use [deleted: wherein] the liquid composition is [deleted: intended to be] added to human milk in a volume-volume ratio of from 1:3 to 1:9."
• The Board considers that the amended claim " by way of Article 64(2) EPC, covers the fortified human milk directly obtained by the claimed use. [The proprietor] argued that in view of claim 1 as granted the scope of protection had not been extended. [] The board acknowledges that claim 1 as granted covers a liquid human milk fortifier composition and its use. However, its scope by no means extends to the product obtained by this use, since, even though covering a use, claim 1 itself is not a use claim." 

EPO T 1471/14 -  link

4. Amendments - Article 123(3) EPC

4.1 Claim 1 of the first auxiliary request differs from claim 1 of the main request in that the claim has been reworded as a use claim, namely as a use "as a human milk fortifier for providing nutrition to preterm infants, wherein in use the liquid composition is added to human milk in a volume-volume ratio of from 1:3 to 1:9".

4.2 As set out in T 401/95 (point 4.3.2 of the reasons), there are two different categories of use claims, namely

(a) the use of a physical entity to achieve an effect, and

(b) the use of a physical entity to produce a product.

A use claim of the latter category (b) is to be considered as a process claim comprising physical steps for producing the product using the physical entity. Pursuant to Article 64(2) EPC, the product insofar as it is directly obtained by that process, is also protected. Hence, the product, when obtained by that process for producing the product, is within the scope of protection conferred by that type of use claim (see decisions G 2/88, point 5.1 of the reasons and T 282/09, point 2.3 of the reasons).

4.3 In the present case, the wording in claim 1 "wherein in use the liquid composition is added to human milk in a volume-volume ratio of from 1:3 to 1:9." represents a process step of adding the liquid human milk fortifier composition to human milk. There can therefore be no doubt that claim 1 of the first auxiliary request belongs to the latter type of use claims (b). It thus, by way of Article 64(2) EPC, covers the fortified human milk directly obtained by the claimed use.

4.3.1 The appellant argued that in view of claim 1 as granted the scope of protection had not been extended. More specifically, claim 1 as granted was a product claim referring to a liquid human milk fortifier composition. Since a product claim also covered any use of the claimed product, claim 1 as granted also covered the use of the human milk fortifier composition and the product resulting from this use.

The board acknowledges that claim 1 as granted covers a liquid human milk fortifier composition and its use. However, its scope by no means extends to the product obtained by this use, since, even though covering a use, claim 1 itself is not a use claim.

4.3.2 There was also the argument that there was no extension of the scope of protection in view of claim 18 as granted. This claim reads as follows:

"18. Use of from 15% to 45% by weight of protein, on a dry weight basis, and having a caloric density of from 1.25 kcal/ml to 6.0 kcal/ml for the manufacture of a liquid human milk fortifier composition for providing nutrition to preterm infants by addition of said composition to human milk in a volume-volume ratio of from 1:3 to 1:9 and by administration of the fortified human milk to the preterm infant." (emphasis added by the board)

This granted use claim is in the Swiss-type form for a second medical use and requires two steps, namely firstly that the human milk fortifier composition is added to human milk and secondly that the resulting product is administered to a preterm infant. Unlike this granted claim, claim 1 of the first auxiliary request does not require this second step. It thus covers uses wherein this second step does not occur. Its scope is therefore different from that of granted claim 18.

4.3.3 In view of the above, claim 1 of the first auxiliary request does not meet the requirements of Article 123(3) EPC. The first auxiliary request is thus not allowable.

4.4 The respondents also raised an objection of added matter and an objection under Article 53(c) EPC. In view of the fact that the first auxiliary request is not allowable under Article 123(3) EPC, the board did not need to give a decision on these issues.