T 0128/82 - Inventive step of product claims

Key points

• This is a decision from the archives.
• Let's assume a patent with a single claim directed to a single compound X. The claim is a pure compound claim, simply reciting the chemical formula (or IUPAC name), nothing more. The description teaches one possible use of compound X. Let's assume as a catalyst for some chemical reaction A.
• The claim is, however, not limited to that particular use. In fact, the claim gives absolute product protection, also covering other uses. For instance, as a catalyst for another chemical reaction B for which compound X may be a poor catalyst. Can an opponent use this in some way for an inventive step under current EPO case law, e.g. by filing evidence that compound X is not effective as a catalyst for chemical reaction B (assuming that chemical reactions B and A are very different from each other)?
• Decision T 0128/82 appears to indicate that such an attack does not work under the case law of the BoA.
• The decision is about first medical use claims, but that should not distract us now.
• The Board in T0128/82: "the practice of the European Patent Office hitherto has shown that substance and medical preparation claims for therapeutically active compounds not limited to specific indications are allowed, even though as a rule only certain specific activities are stipulated. " 
• So, to rephrase: the practice of the EPO then was [and still is] that product claims for compounds having some medical activity are allowed, these claims not being limited to specific uses, even though, as a rule, only one or few specific medical uses are taught in the description.
• As far as I know, the above statement is still the EPO's practice, and equally in non-medical fields of chemistry. Hence, the practice of the EPO is that product (substance, composition) claims are allowed, these claims affording absolute product protection not limited to a specific use, even though, as a rule, only one or few uses of the product are taught in the description.
• The relevant national German decision is Disiloxan, BGHZ 51, 378 (1969) on p.8, which indicates that the Kongorot decision of 20.03.1889 is to be followed (that decision can be found in Patentblatt 1889, issue 19, page 209, available at the DPMA website here. ).
• Also relevant is T 181/82, about the inventive step of a pure compound claim, which states that "An effect which may be said to be unexpected can be regarded as an indication of inventive step", the effect at issue was obtained when the claimed compounds were used as light stabilisers as was taught in the description.
• In other words, no patentability objection can be raised solely on the ground that a product claim covers any use whereas the description teaches only one use.
• Absolute product protection has been controversial in the past, somewhat recently for genes, and further back in history for chemical compounds in general. See, generally, R. Uhrich, Stoffschutz, 2010, available open access since 2020 under DOI 10.1628/978-3-16-159918-7.  The thesis is quite critical of the current case law on patents for chemical products.

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

T 0406/86 - Rule 79 and Rule 81

Key points

• Because Art.114 only refers to holding facts and evidence inadmissible, the question arises of what provision of the EPC provides the basis for holding amended claims inadmissible in opposition proceedings and in opposition appeals?
• As noted in T1914/12, “The RPBA can help in clarifying and interpreting the EPC but they cannot confer on the boards any powers that the EPC does not give them” (CLBA VII.1.4).
• This old decision T 0406/86 provides an analysis.
• “Although Rules 57 and 58 EPC [1973] directly concern only those criteria to be applied by the Opposition Division when the question of inviting the patent proprietor to make amendments arises, they indicate clearly and conclusively, so the Board is convinced, that even if not explicitly invited by the Opposition Division the patent proprietor may expect his proposals for amendments [i.e. auxiliary requests] to be allowed [i.e. admitted] only if it [=the OD] decides after exercising due discretion that it [=the OD] regards them as appropriate and/or necessary in the above sense. "
• Rule 58(2) EPC 1973 corresponds to Rule 81(3) EPC 2000 which provides that: “In any communication under Article 101, paragraph 1, second sentence, the proprietor of the European patent shall, where necessary, be given the opportunity to amend, where appropriate, the description, claims and drawings.”
• These Rules apply equally in appeal (R.100(1) EPC 2000, Rule 66(1) EPC 1973).
• I just highlight that the Board derived the principle that late-filed claim requests in opposition can be held inadmissible from a textual analysis of the Implementing Regulations.
•  The legal basis for Rules 75 57 and 58 EPC 1973 was Article 101(2) EPC 1973: “In the examination of the opposition, which shall be conducted in accordance with the provisions of the Implementing Regulations, the Opposition Division shall invite the parties, as often as necessary, to file observations, within a period to be fixed by the Opposition Division, on communications from another party or issued by itself.” (now in Article 101(1) EPC 2000).
• See also T 0295/87 (link): "Although Article 101(2) and Rule 57 EPC [1973] only specifically refer to the criteria which the Opposition Division should use when considering whether to invite the filing of observations, in the Board's view it is clearly and necessarily implicit in these provisions that, in the absence of an express invitation from the Opposition Division, the parties may only file observations as a matter of discretion, when the Opposition Division considers them to be "necessary" or "expedient", in the sense discussed above. It would make a nonsense of these provisions to interpret them as providing that the Opposition Division should only invite observations from parties when it is considered "necessary" or "expedient", but that the parties can file observations as a matter of right even when they are unnecessary or inexpedient. (In this connection reference is made to Decision T 406/86 dated 2 March 1988, OJ EPO 1989, 302)."  it should be recognised that, in appropriate cases, both the Opposition Division and the Boards of Appeal have the power, and indeed the duty, to refuse to admit observations and/or supporting documents for consideration in the opposition and, respectively, the appeal, in the exercise of discretion under Articles 101(2) and 114(2) and Rule 57(3) EPC [1973]."
• Though here in T 0295/87 the focus is on what is now Rule 80 EPC 2000 (the substantive ground for inadmissibility of amended claims in opposition). In T 406/86, the amendments were late filed and not prima facie clear.

EPO T 0406/86 - link (German) - English OJ version

3.1 In opposition proceedings (including related appeal proceedings) the question whether to allow the patent proprietor's proposals for amendments to the description or claims is left to the Opposition Division and Board of Appeal, which must exercise due discretion in the matter. This derives from the relevant provisions of the EPC as follows:

3.1.1 Article 101(2) EPC lays down that examination of the opposition (i) shall be conducted in accordance with the provisions of the Implementing Regulations and that (ii) "the Opposition Division shall invite the parties, as often as necessary, to file observations ... on communications from another party or issued by itself."

T 0598/98 - Opposition and lapse

Key points

• In recent decision T 1403/16 the Board said that: " the decision on whether or not to continue the opposition proceedings under Rule 84(1) EPC lies within the opposition division's discretion" . 
• I was a bit surprised by this, because to me it seems weird that if the opponent requests continuation, the OD can decide at their discretion to terminate the proceedings.
• Both the Benkard book (2nd, art. 99, nr. 62) and the Singer/Stauder (5th ed. Art. 101 nr. 70) say that the decision is a discretionary one, Singer referring to T 598/98. Therefore, today's post is about that decision.
• The T 598/98 decision is in German, so I give the German text of Rule 84(1) first:  "ist das Patent in allen diesen Staaten erloschen, so kann das Einspruchsverfahren fortgesetzt werden, wenn der Einsprechende dies innerhalb von zwei Monaten ... beantragt". 
• The Board takes "kann"  is indicating that continuation is optional, not as indicating that the Opponent's request is a requirement for continuation (if it indicates a requirement, continuation can still be mandatory if the requirement is fulfilled).
• The Board "Die Entscheidung, das Verfahren entweder einzustellen oder fortzusetzen, liegt somit nach dem Wortlaut der Vorschrift auch dann im Ermessen der Einspruchsabteilung, wenn der Einsprechende die Fortsetzung des Verfahrens beantragt hat." 
• This result is still weird taking into account that under Article 99(3) EPC 1973, " an opposition may be filed even if the European patent has been surrendered or has lapsed for all the designated States." The EPC gives you a right to file opposition, but whether the OD actually considers the opposition in substance is at the OD's discretion under T 598/98.
• To cite the Travaux Préparatoires, Rule 60, M/PR/1, point 94, point 2284, the idea of Rule 60 is "to recognise an opponent's right to have opposition proceedings continued where a European patent had been surrendered or had lapsed while opposition proceedings were still in progress" (emphasis added). From the proposal (M/14, p. 102) leading to the text: "if any party interested is granted the right to institute proceedings against a European patent which has been surrendered or which has lapsed for all the designated States, it would logically be necessary to grant the opponent the right to have the opposition proceedings continued where the European patent is surrendered or lapses whilst the proceedings are taking place" (emphasis added; also referenced in T598/98).
• This understanding was confirmed in T740/15: the Board deduces "from the Travaux Préparatoires that in the presence of a valid request of the opponent to continue the opposition proceedings [], the scope of Rule 60(1) EPC (now Rule 84(1) EPC) was intended to limit the discretion of the opposition division to the continuation of the opposition proceedings. The opposition division had therefore in the circumstances of the present case no other discretion than to continue the opposition proceedings." For some reason, T 598/98 is still in CLBA IV.C.4.1.2.a whereas T 740/15 is in CLBA IV.C.4.1.2. 
• Perhaps it is no coincidence that T 598/98 is in German. From T 598/98: "Im deutschen Patentrecht wird die Auffassung vertreten, daß das Erlöschen des Patents zur Erledigung des Einspruchsverfahrens [i.e. for the DPMA] in der Hauptsache führt. Das Einspruchsverfahren wird nur fortgeführt, wenn der Einsprechende ein schutzwürdiges Interesse an dem rückwirkenden Widerruf des ex nunc erloschenen Patent dartun kann" (See also Benkar, loc. cit.)
• The Board decides in T 598/98 that it must take into account "procedural economy" in view of the duration and number of other appeal cases pending before it. In my view, where the legislator so clearly wishes to give the opponent a right (even if the wording of the provision is not unambiguous), work load of the Board can not be a factor.
• Finally, the Patentee can terminate the substantive opposition proceedings at any time by disapproving the text / requesting revocation. The fact that the Patentee does not do so, indicates that there is commercial value in the patent, confirming that the opposition is not meaningless.
• The Guidelines state in GL D-VII 5.1 that " the opposition proceedings must be continued at the request of the opponent filed within two months after the date on which the opposition division informed the opponent of the surrender or lapse" (emphasis added). The Guidelines also state that " If, in the case of a request for continuation of the proceedings, the patent proprietor has renounced before the competent authorities in the designated states all rights conferred by the patent with ab initio and universal effect, or if no request for continuation has been received within the time limit, the opposition proceedings will be closed. The decision to close the proceedings will be communicated to the parties." This of course is contradictory: what if the Patentee alleges that he has renounced ab initio and with universal effect, but the opponent requests continuation? In that case it would be convenient if the Patentee would disapprove the text in opposition, leading to revocation of the patent by the OD, which should not change anything for Patentee if the patent was indeed renounced entirely, ab initio, and with universal effect.

EPO T 598/98 -  link

EPO Headnote

1. Das Bestehen eines Rechtsschutzinteresses der Einsprechenden an einem rückwirkenden Widerruf des Patents ist eines der Elemente, die für die Entscheidung der Kammer über Einstellung oder Fortsetzung des Einspruchsbeschwerdeverfahrens gemäß Regel 60 (1) EPÜ eine Rolle spielen können.

2. Das allgemeine Interesse an einer zentralen Feststellung über die Patentwürdigkeit einer in einem Patent beanspruchten Erfindung rechtfertigt es jedenfalls dann, ein Verfahren nach Erlöschen des Patents gemäß Regel 60 (1) EPÜ noch bis zum Erlaß einer Endentscheidung fortzusetzen, wenn die Sache im Zeitpunkt des Erlöschens im wesentlichen entscheidungsreif ist, und es auch im Hinblick auf den Bestand des Patents einen Unterschied im Ergebnis ausmacht, ob eine Sachentscheidung getroffen oder das Verfahren bloß eingestellt wird (hier: Widerruf des Patents durch die Kammer nach Zurückweisung des Einspruchs durch die Einspruchsabteilung).

Entscheidungsgründe

1. Fortsetzung des Verfahrens (Regel 60 (1) EPÜ)