T 0258/21 - Applying G 2/21

Key points

• This is an appeal against a refusal decision.
• "In the Board's view, the effect of an improved activity and reduced side-effects using clevidipine compared to other antihypertensive agents, in particular nicardipine in patients with specifically ischemic strokes, is not to be taken into account nor convincingly demonstrated, for the following reasons."
• I'm not entirely sure if "in particular" here means "preferably". 
• "G 2/21 prescribes that "a patent applicant or proprietor may rely upon a technical effect for inventive step if the skilled person, having the common general knowledge in mind, and based on the application as originally filed, would derive said effect as being encompassed by the technical teaching and embodied by the same originally disclosed invention" (see Order 2.). Here, the Board notes that this effect was neither contemplated nor even suggested in the original application. Indeed the original application did not mention any comparison to other anti-hypertensive agents and it encompassed the treatment of both hemorrhagic and ischemic stroke (see e.g. original page 3, 2**(nd) paragraph). It follows that this technical effect relied upon by the applicant cannot be taken into account for the assessment of inventive step in accordance with G 2/21."
• Note, the asserted technical effect is for patients with ischemic strokes. The application as filed mentioned both hemorrhagic and ischemic stroke; the Board considers this to be insufficient to meet the requirement of "as being encompassed by the technical teaching".
• D1 is the closest prior art, "D1 concentrates on clevidipine and refers in particular to a study on clevidipine for the management of hypertension in patients with a hemorrhagic stroke"
• The Board also considers the evidence to be insufficient. The remark about G 2/21 hence seems obiter.
• It is also unclear to me if the objection is due to a lack of technical support for the effect in the application as filed. The Board states that the objection is that "the Board notes that this effect was neither contemplated nor even suggested in the original application".  On the other hand, "the Board observes that the original application does not provide any experimental data. No technical effect directly linked to the identified distinguishing feature, namely the reduction of ischemic stroke damage, has thus been demonstrated in the application documents. In this context, the Board underlines that the choice of clevidipine over nicardipine does not constitute the distinguishing feature over D1."
• The Board does not state that the application can only be refused if the recited medical effect was (a priori) incredible at the priority date (or filing date).
• Finally, the claim is a second medical use claim, and it is unclear to me why the Board examines the matter under inventive step instead of sufficiency. 
• The Board: "Moreover, even if said technical effect would have been derivable from the original application, the Board observes that Annex 3 and Annex 4 [i.e. post-published evidence, in particular, scientific publications] are merely abstracts reporting results of "ongoing" studies. These documents do not provide any detailed results nor any details on the protocols used. Merely average values for some properties of clevidipine and/or further anti-hypertensive drugs are provided. The meaningfulness of the appellant's exploitation of the data provided in these abstracts is therefore prima facie questionable. ... Furthermore, the study of Annex 4 appears to be a retrospective case study which was not designed as a clinical trial.
• Compare T 2036/21: " In proceedings before the EPO it is not a prerequisite to perform a statistical analysis of the results .... as it is most often required in biomedical research and by health authorities granting marketing authorisations for medicinal products."
• The Board: "As to the balance of efficacy, precision (titrability) and safety, it is not necessary to examine whether this effect can be taken into account or is suitably demonstrated by annexes 3 and 4, because in any case this effect does not modify the conclusion of the Board set out below. As a result, starting from D1, the objective technical problem may thus be formulated, as suggested by the appellant, as the provision of a medicament that can be used in a method of reducing ischemic stroke damage in a subject with an ischemic stroke (see statement of grounds page 8, 7**(th) paragraph) which provides good balance of efficacy, precision (titrability) and safety (see page 2, 4**(th) paragraph under the heading "5.1. Main request", of the letter dated 14 July 2023)."
• The Board finds the claim to be obvious.
• Note, G 2/21 hence must not be understood to limit the Board's discretion to assume a technical effect if an inventive step is denied in the end.
• 
  

EPO 

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

https://www.epo.org/en/boards-of-appeal/decisions/t210258eu1

1. Inventive step

1.1 Closest prior art

The appellant considered D1 as the closest prior art.

D1 relates to clevidipine for the management of hypertension (see title). It discloses the use of dihydropyridines for lowering blood pressure in hypertensive crises in intensive care units and emergency departments resulting from complications such as hemorrhagic stroke, cerebral ischemia, encephalopathy or myocardial ischemia (see abstract and pages 516, left column and right column, 1st paragraph). Dl concentrates on clevidipine and refers in particular to a study on clevidipine for the management of hypertension in patients with a hemorrhagic stroke (see Dl, page 526, right column, 2nd paragraph, 2nd sentence).

The Board agrees that Dl may be considered to represent the closest prior art.

1.2 Distinguishing feature

As argued by the appellant throughout the appeal proceedings, the claimed subject-matter differs from Dl in that the management of hypertension with clevidipine occurs in a patient with a ischemic stroke to reduce ischemic stroke damage.

1.3 Technical effect and objective technical problem

1.3.1 The Board observes that the original application does not provide any experimental data. No technical effect directly linked to the identified distinguishing feature, namely the reduction of ischemic stroke damage, has thus been demonstrated in the application documents. In this context, the Board underlines that the choice of clevidipine over nicardipine does not constitute the distinguishing feature over D1 as identified by the appellant.

1.3.2 In its letter dated 14 July 2023, the appellant referred for the first time to the achievement of "an optimal balance of efficacy, precision (titrability) and safety" mentioned on page 4 line 22 of the original application (see page 2, 4**(th) paragraph under the heading "5.1. Main request", of the letter dated 14 July 2023). In the same letter, the appellant argued also that clevidipine would have higher activity and lower side effects than other hypertensive agents (see page 4, last paragraph of the letter dated 14 July 2023). In particular, it would not show the drawbacks in terms of hypoperfusion of nicardipine (see page 5, 1**(st) paragraph of the letter dated 14 July 2023), which was indicated as preferred anti-hypertensive agent in case of acute ischemic stroke in D1 (see Table 1 of D1). According to the appellant these surprising effects would be substantiated by the post-published Annex 3 and Annex 4.

1.3.3 In the Board's view, the effect of an improved activity and reduced side-effects using clevidipine compared to other antihypertensive agents, in particular nicardipine in patients with specifically ischemic strokes, is not to be taken into account nor convincingly demonstrated, for the following reasons.

G 2/21 prescribes that "a patent applicant or proprietor may rely upon a technical effect for inventive step if the skilled person, having the common general knowledge in mind, and based on the application as originally filed, would derive said effect as being encompassed by the technical teaching and embodied by the same originally disclosed invention" (see Order 2.). Here, the Board notes that this effect was neither contemplated nor even suggested in the original application. Indeed the original application did not mention any comparison to other anti-hypertensive agents and it encompassed the treatment of both hemorrhagic and ischemic stroke (see e.g. original page 3, 2**(nd) paragraph). It follows that this technical effect relied upon by the applicant cannot be taken into account for the assessment of inventive step in accordance with G 2/21.

Moreover, even if said technical effect would have been derivable from the original application, the Board observes that Annex 3 and Annex 4 are merely abstracts reporting results of "ongoing" studies. These documents do not provide any detailed results nor any details on the protocols used. Merely average values for some properties of clevidipine and/or further anti-hypertensive drugs are provided. The meaningfulness of the appellant's exploitation of the data provided in these abstracts is therefore prima facie questionable. This applies in particular to the comparison between clevidipine and nicardipine based on Annex 4, heavily relied upon by the appellant. According to Annex 4, the results obtained for clevidipine are based on 13 patients (initially 10 patients and in addition 3 patients for which clevidipine was substituted to labetalol) while those for nicardipine are based on only 2 patients. The relevance of a comparison of average values obtained on each set of data is therefore limited. Furthermore, the study of Annex 4 appears to be a retrospective case study which was not designed as a clinical trial.

1.3.4 As to the balance of efficacy, precision (titrability) and safety, it is not necessary to examine whether this effect can be taken into account or is suitably demonstrated by annexes 3 and 4, because in any case this effect does not modify the conclusion of the Board set out below. As a result, starting from D1, the objective technical problem may thus be formulated, as suggested by the appellant, as the provision of a medicament that can be used in a method of reducing ischemic stroke damage in a subject with an ischemic stroke (see statement of grounds page 8, 7**(th) paragraph) which provides good balance of efficacy, precision (titrability) and safety (see page 2, 4**(th) paragraph under the heading "5.1. Main request", of the letter dated 14 July 2023).

1.4 Obviousness of the solution

1.4.1 D1 suggests to use clevidipine to reduce blood pressure in patients with hemorrhagic stroke and Annex 1 discloses the potential benefits of reducing arterial hypertension in ischemic stroke.

In particular, Annex 1 highlights the need of a rapid reduction of blood pressure and at the same time of the potential for a rapid reversal to reduce the damage caused by the stroke while avoiding neurological worsening (see pages 1670-1672), i.e. to provide good balance of efficacy, precision (titrability) and safety. The skilled person aiming at solving the above defined technical problem would thus have been directed by Annex 1 towards an antihypertensive agent allowing a rapid reduction of blood pressure and at the same time a rapid reversal.

D1 provides several pharmacokinetics data for clevidipine (see e.g. Table 2, providing half-life, available concentration, initial and maintenance doses,...), reviews several studies on clevidipine and concludes that the advantages of clevidipine include inter alia a short half-life, rapid onset and easy dosage titration (see paragraph bridging pages 526 and 527). As stated in the original application (see page 9 lines 5 to 7) easy dosage titration will contribute to ensuring a rapid reversal to avoid overshoot of hypotension. The skilled person would thus have learned from D1 that clevidipine has a rapid onset and offset of activity and is thus suitable to allow a rapid reversal. It therefore fulfills the criteria defined in Annex 1. The properties of clevidipine reported in D1 furthermore correspond to the results provided in Annex 3 and Annex 4 (rapid onset and offset of activity, easy titration and low administration volume in view of concentration and administration doses), which cannot thus be seen as unexpected.

Hence, the Board considers that the skilled person would have had a reasonable expectation of success of reducing ischemic stroke damage in a patient with ischemic stroke with clevidipine and thereby providing good balance of efficacy, precision (titrability) and safety in view of D1 together with Annex 1.

1.4.2 The appellant argued that the present solution would not be obvious since D1 did not relate to ischemic stroke and hemorrhagic and ischemic stroke would present many medical differences.

The Board disagrees.

As argued by the appellant, the etiology of the hemorrhagic and ischemic strokes is different as well as the stroke damages. However, in both cases reduction of blood pressure per se is known to be beneficial.

Furthermore Annex 1 is directed to the management of patients with specifically ischemic stroke. The properties indicated in Annex 1 for a good antihypertensive candidate for reducing ischemic stroke damage, namely rapid onset of activity and rapid reversal, constitute properties of the antihypertensive drug per se which have been found to be beneficial in said treatment. There is no indication that these properties are only to be found when reducing hypertension in patients with ischemic stroke.

1.4.3 In its letter dated 14 July 2023 and during oral proceedings, the appellant also argued that D1 would not provide any indication of the actual behaviour of clevidipine in patients with ischemic stroke, which was not predictable. On the contrary D1 did not disclose clevidipine in the list of antihypertensive agents in the treatment of acute ischemic stroke, but only labetalol or nicardipine along with its risk of hypoperfusion.

The Board firstly observes that since inventive step is under discussion and the treatment of ischemic stroke is the distinguishing feature, it is evident that D1 does not provide any data for clevidipine specifically in patients with ischemic stroke. Furthermore, D1 is not a review on various antihypertensive agents and their applications but it focuses on clevidipine. The passage on other antihypertensive agents including table 1 belongs to the introductory part of D1 presenting the background of the review. Contrary to the appellant's argument provided during the oral proceedings, the skilled person would not understand this passage as teaching away from using clevidipine in patients with ischemic stroke. As stated above, Annex 1 defines properties of antihypertensive drugs per se which, according to Annex 1, would be beneficial in the treatment of hypertension in patients with ischemic stroke. These properties are intrinsic properties of the antihypertensive drug and the skilled person would expect them to occur independently of the health status of the patient to which it is administered.

In this context, the Board underlines that, should the appellant's unpredictability approach have been followed (i.e. the effect of clevidipine in the treatment of ischemic stroke damage in patients with ischemic stroke not be considered plausible on the basis of Annex 1 and D1), an issue of lack of sufficiency of disclosure would have arisen since the original application does not provide any experimental data substantiating the claimed medical use.

1.4.4 The appellant also stated in the letter dated 14 July 2023 that Annex 1 confirmed the impossibility of determining an unambiguous relation between the mechanism of action and how exactly the blood pressure in patients is lowered. The appellant referred to the passage on page 1671, left column, 2**(nd)-3**(rd) paragraphs of Annex 1 which concludes that "the appropriate treatment of arterial hypertension in the setting of acute ischemic stroke remains controversial".

The Board observes that the passage on page 1671 referred to by the appellant concerns the overall question of managing hypertension per se in patients with ischemic stroke and under which conditions (which threshold of systolic blood pressure to start anti-hypertension treatment from, setting of thrombolytic therapy in relation to hypertension management,...). It remains that if hypertension management was to be used, then the rapid onset and ability for a rapid reversal are recommended independently of any particular mechanism of action of a specific antihypertensive drug (see paragraph bridging pages 1671-1672).

1.4.5 Finally, the fact that, as underlined by the appellant during the oral proceedings, D1 mentions remaining potential drawbacks with clevidipine (see page 525 left column last full paragraph) does not undermine the combined teaching of D1 and Annex 1 with respect to the expectation of success of solving the problem posed, because these drawbacks are side effects not related to the properties at interest to solve the problem posed.

1.4.6 In