T 0752/17 - No dominant patent could exist

Key points

• This decision was taken at the oral proceedings of 24.03.2021. The written decision was issued 26.10.2022, i.e. more than a year later.
• Note that new Article 15(9) RPBA 2020 introduced the rule that: " (9)(a) Where the Chair announces the decision on the appeal orally in accordance with paragraph 6, the Board shall put the decision in writing and despatch it within three months of the date of the oral proceedings. If the Board is unable to do so, it shall inform the parties when the decision is to be despatched. The President of the Boards of Appeal shall also be informed thereof."
• No communication to the parties about the delay in issuing the written decision is visible in the online file.  Perhaps it was sent to the parties but excluded from the public file e.g. because it contains private information about board members.
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• " Claim 1 is a second medical use claim in the format of a purpose-restricted product claim pursuant to Article 54(5) EPC, which is directed to an isolated oligonucleotide agent for use in a method of immunotherapy by inducing or stimulating an immune response." 
• Sufficiency of disclosure is at issue.
• The Board, on second medical uses: "According to the established case law of the Boards of Appeal, the mere fact that a claim is broad is not in itself a ground for considering that the requirement of sufficient disclosure in the patent is not met (see, inter alia, decision T 19/90, OJ EPO 1990, 476, point 3.3; and decision T 636/97 of 26 March 1998, point 4.5). "
• "For claims directed to a second medical use, it has been established in the case law that the requirement of sufficient disclosure is usually fulfilled if a person skilled in the art can obtain the therapeutic agent to be applied, and the patent renders it plausible that the therapeutic agent is suitable for the claimed therapeutic application (see decision T 1959/15 of 2 April 2020, point 4.2). Clinical data may not be required, if the patent provides information in the form of experimental tests showing an effect which, for the skilled person, directly and unambiguously reflects the therapeutic application (see decision T 241/95, OJ EPO 2001, 103, point 4.1.2; and decision T 158/96 of 28 October 1998, point 3.5.2)." 
• " it should be noted that the question of whether or not a skilled person is working within the scope of the claim is not related to sufficiency of disclosure, but to the definition of the scope of the claim (see, inter alia, decision T 1811/13 of 8 November 2016). 
• Also the question of whether future inventions may fall under the scope of the claim is immaterial to the assessment of sufficiency of disclosure, because otherwise no dominant patent could exist (see also decision T 292/85, point 3.1.2)." 
• T 292/85: " It follows that the [functional] features [of the claim] may generically embrace the use of unknown or not yet envisaged possibilities, including specific variants which might be provided or invented in the future." 
• I understand the Board's reference to "dominant patents" to be a reference to the principle codified in e.g. Article 31(l) TRIPS agreement ("where such use is authorized to permit the exploitation of a patent (“the second patent”) which cannot be exploited without infringing another patent (“the first patent”)".  

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

https://www.epo.org/law-practice/case-law-appeals/recent/t170752eu1.html