T 0437/14 - After G1/16

Key points

• This is the follow-up decision after the Enlarged Board confirmed in G 1/16 that undisclosed disclaimers are to be examined according to G2/03.
•  "  In its earlier interlocutory decision, the board also already decided that the disclaimers establish novelty over accidental anticipations under Article 54(2) EPC, namely D5 and D7, and that they do not remove more than what is necessary to restore novelty over D5 and D7" 
• " The board in the present composition further considers that there is no evidence that, while establishing novelty over those accidental anticipations, the disclaimers provide a technical contribution adding subject-matter extending beyond the content of the application as filed. In particular, no evidence was put forward by the opponents, and the board does not see any either, that the limitation of the genus of compounds covered by the formula in claim 1 which results from the excision of the seven specific compounds defined in the disclaimer, becomes relevant for establishing inventive step or sufficiency of disclosure. " 
• The disclaimer is hence allowable. Next issue is priority.
• " What remains to be decided is whether the insertion of the two disclaimers into claim 1 leads to the loss of the priority right. " 
• " As set out in points 2.5 and 2.6 above, the two disclaimers present in claim 1 do not provide a technical contribution and fulfil the requirements of Article 123(2) EPC. Thus, they cannot "change the identity of the invention within the meaning of Article 87(1) EPC" and do not "affect the right to priority from the first application", as stated in G 1/03." 
• An attack based on toxic divisional applications is also rejected because of partial priority.  "Claim 1 is, in fact, a generic "OR"-claim encompassing alternative subject-matter which is directly and unambiguously disclosed in the priority document and is thus entitled to a partial priority for that alternative subject-matter within the meaning of G 1/15" 

EPO T 0437/14 - ECLI:EP:BA:2019:T043714.20190312  link

Summary of Facts and Submissions

I. This decision concerns the appeals filed by opponents 1 and 3 and the patent proprietors against the interlocutory decision of the opposition division finding that European patent No. 1 933 395 as amended meets the requirements of the EPC.

[...]

Referral to the Enlarged Board of Appeal

XII. After reviewing a number of earlier decisions of the board of appeal, the board considered that the case law which had developed after G 2/10 was not uniform, as regards whether the "gold standard" was applicable to undisclosed disclaimers. It then decided to refer to the Enlarged Board of Appeal several questions of law aiming at clarifying whether the principles developed in G 2/10 were to be applied to undisclosed disclaimers and/or whether the criteria developed in G 1/03 continued to apply.

XIII. Since the allowability of the disclaimers and the relevance of the attacks based on D57 and D58 depended on the answer to the questions posed to the Enlarged Board of Appeal, the board did not give a ruling on these issues.

XIV. With its decision G1/16 dated 18 December 2017 (OJ EPO 2018, A70), the Enlarged Board of Appeal provided the answers to the questions referred to it.

Reasons for the Decision

New main request

1. Points which are still to be decided

1.1 The present decision deals with the following points which were not decided by the board in its earlier interlocutory decision T 437/14:

• - whether, taking into account the answers to the questions referred to the Enlarged Board of Appeal in case G 1/16, the two disclaimers inserted into claim 1 can be considered to comply with the requirements of Articles 123(2) and 76 EPC,
• - whether the claimed subject-matter enjoys priority right,
• - whether D57 and D58 anticipate the claimed subject-matter under Article 54(3) EPC.

2. Allowability of the disclaimers

2.1 In decision G 1/16 (OJ EPO 2018, A70; see the Order), the Enlarged Board of Appeal established that:

"For the purpose of considering whether a claim amended by the introduction of an undisclosed disclaimer is allowable under Article 123(2) EPC, the disclaimer must fulfil one of the criteria set out in point 2.1 of the order of decision G 1/03.
The introduction of such a disclaimer may not provide a technical contribution to the subject-matter disclosed in the application as filed. In particular, it may not be or become relevant for the assessment of inventive step or for the question of sufficiency of disclosure. The disclaimer may not remove more than necessary either to restore novelty or to disclaim subject-matter excluded from patentability for non-technical reasons".

2.2 As further clarified by the Enlarged Board of Appeal, the assessment of the allowability of a claim amendment by an undisclosed disclaimer is governed exclusively by the criteria laid down in G 1/03. For undisclosed disclaimers the proper test is whether the criteria of G 1/03 are fulfilled, and for disclosed disclaimers the proper test is the gold standard test of G 2/10. In particular, the gold standard disclosure test referred to in decision G 2/10 is not the relevant test for examining whether a claim amendment concerning an undisclosed disclaimer complies with the requirements of Article 123(2) EPC (G 1/16; Reasons for the decision, points 43, 44, 49.1).

2.3 As already decided by the board of appeal in its earlier interlocutory decision T 437/14, the disclaimers inserted into claim 1 are undisclosed disclaimers (Reasons for the decision, point 7.2). Thus, in view of the ruling in decision G 1/16, these disclaimers have to be examined applying the criteria laid down in G 1/03.

2.4 In its earlier interlocutory decision, the board also already decided that the disclaimers establish novelty over accidental anticipations under Article 54(2) EPC, namely D5 and D7, and that they do not remove more than what is necessary to restore novelty over D5 and D7 (Reasons for the decision, points 10.1.7 and 10.1.8).

2.5 The board in the present composition further considers that there is no evidence that, while establishing novelty over those accidental anticipations, the disclaimers provide a technical contribution adding subject-matter extending beyond the content of the application as filed. In particular, no evidence was put forward by the opponents, and the board does not see any either, that the limitation of the genus of compounds covered by the formula in claim 1 which results from the excision of the seven specific compounds defined in the disclaimer, becomes relevant for establishing inventive step or sufficiency of disclosure. Accordingly, the disclaimers also meet the conditions laid down in points 2.6 and 2.6.1 of the Reasons for the decision in G 1/03, and in the second paragraph of the Order of G 1/16.

2.6 For these reasons the board concludes that, since the disclaimers inserted into claim 1 of the new main request fulfil the criteria of G 1/03, they do not add originally undisclosed subject-matter extending beyond the content of the application as filed. In its earlier interlocutory decision T 437/14 the board has already decided that, leaving aside the issue of the disclaimers, basis for claim 1 and for the dependent claims can be found in the description of the application as filed and in the identical description of the parent application as filed. From this it follows the new main request fulfils the requirements of Articles 76 and 123(2) EPC.

3. Validity of the priority right and novelty

3.1 According to opponent 3, the subject-matter of claim 1 of the new main request lacked novelty over D57 and D58, two divisional applications stemming from the application on which the patent in suit was based. Opponent 3 argued that D57 and D58 disclosed specific compounds (shown e.g. in figures 10, 12, 14, 17, 19, 21, 22, 25, 27, 29 and 31 of each of D57, D58 and the patent) falling within the scope of claim 1, and that D57 and D58 validly claimed priority right from the earlier application US 09/452,346. By contrast, in view of the disclaimers added to claim 1 of the new main request, this claim did not validly claim a priority right from US 09/452,346. Thus, D57 and D58 belonged to the state of the art under Article 54(3) EPC for the subject-matter of claim 1 of the new main request.

3.2 For this attack to succeed, two conditions would have to be fulfilled, namely:

- at least one embodiment of the divisional application/s which enjoys a priority right from US 09/452,346 is encompassed by claim 1 of the new main request, and
- claim 1 of the new main request does not enjoy a priority right or at least a partial priority right for the part/s relating to those embodiment/s from US 09/452,346.

3.3 In its earlier interlocutory decision T 437/14, the board already decided that, leaving aside the issue of the disclaimers present in claim 1, the claims of the new main request are based on the description of the patent application as filed, and in particular on page 13, lines 9 to 10, and page 12, lines 11 to 15 in conjunction with page 4, lines 4 to 7 (Reasons for the decision, points 2.3-2.5).

3.4 The description of the patent application is identical to the description of the earlier application US 09/452,346 from which priority is claimed. Thus, leaving aside the issue of the disclaimers, the subject-matter claimed is also disclosed in that earlier application.

3.5 What remains to be decided is whether the insertion of the two disclaimers into claim 1 leads to the loss of the priority right. In this regard, the board notes that point 4 of the reasoning of decision G 1/03 reads:

"...a disclaimer, not providing a technical contribution (...), which is allowable during the prosecution of a European patent application does not change the identity of the invention within the meaning of Article 87(1) EPC. Therefore, its introduction is allowable also when drafting and filing the European patent application without affecting the right to priority from the first application, which does not contain the disclaimer."

3.6 As set out in points 2.5 and 2.6 above, the two disclaimers present in claim 1 do not provide a technical contribution and fulfil the requirements of Article 123(2) EPC. Thus, they cannot "change the identity of the invention within the meaning of Article 87(1) EPC" and do not "affect the right to priority from the first application", as stated in G 1/03.

3.7 For these reasons, the board arrives at the conclusion that the subject-matter of claim 1 enjoys priority from the earlier application US 09/452,346 from which priority is claimed (Article 87(1) EPC).

3.8 In this context, the board also notes that, as far as D57 and D58 disclose specific compounds falling within the definition of claim 1 and validly claim priority from the earlier application US 09/452,346, claim 1 of the new main request validly claims a corresponding partial priority right from US 09/452,346 for those same specific compounds. Claim 1 is, in fact, a generic "OR"-claim encompassing alternative subject-matter which is directly and unambiguously disclosed in the priority document and is thus entitled to a partial priority for that alternative subject-matter within the meaning of G 1/15 (Reasons of the decision, point 6.4 and Order of that decision).

3.9 As a consequence, the second condition mentioned above in point 3.2 is not fulfilled and D57 and D58 do not form part of the state of the art under Article 54(3) EPC for the purpose of assessing novelty of the claimed subject-matter.

3.10 For the aforementioned reasons, and taking into account the conclusions already reached by the board in its earlier interlocutory decision T 437/14, the board decides as follows:

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 with the order to maintain the patent as amended in the following version:

- Claims: Claims 1 to 5, filed as New Main Request during the oral proceedings before the board on 28 April 2016;

- Description: Pages 3 to 18 as filed during the oral proceedings before the board on 12 March 2019;

- Drawings: Pages 21 to 60 of the patent specification.