T 1464/21 - Implicit disclosure and interpreting a cross-sectional drawing

Key points

• I think it is important to carefully distinguish between inherent features and implicit disclosure.
• "Furthermore, it is established jurisprudence of the boards of appeal that a disclosure can be implicit, where an implicit disclosure relates solely to matter which is not explicitly mentioned but is a clear and unambiguous consequence of what is explicitly mentioned (Case Law of the Boards of Appeal of the European Patent Office, 10th edition, July 2022, II.E.1.3.3). 
• The Board uses "clear and unambiguous consequence "
• Note, the different phrase "inevitable consequence" could be appropriate for inherent features : possibly with a focus on unpredictable inevitable consequences. Such features need not be clear from a document itself (e.g. reworking a described chemical experiment may be necessary  to find out exactly what product is obtained). (edits in italics)
• "Fig. 3A shows only a cross-section of the objective and therefore only a cross-section of the frame 30. However, the person skilled in the technical field under consideration would understand in the technical context of document D1, and in particular in view of Fig. 3A together with the cylindrical symmetrical configuration of the optical system represented in Fig. 3B, that a "frame" configured to fix the lens 29A to the deflection prism 29B (D1, column 4, lines 23 to 25) would - as held by the opposition division in its decision - be a frame encircling the lens. The board concurs in this respect with the appellant's view that it would be unrealistic ("lebensfremd") that the skilled person would construe the disclosure of document D1 relating to the frame as possibly only involving a frame constituted by two distinct portions separated from each other. For these reasons, in the board's view, document D1 discloses implicitly that the frame 30 encircles the lens 29A along its whole perimeter as this is a clear and unambiguous consequence of what is explicitly mentioned."
• Comment: D1 is a patent document, does this mean that an amendment of D1 to explicitly mention the feature ("the frame 30 encircles the lens 29A along its whole perimeter ") would comply with Article 123(2) ?

EPO 

You can find the link to the decision and an extract of it after the jump.

T 0933/18 - (II) Poisonous priority

Key points

•  The appellants [opponents] argued that the method of claim 1 lacked novelty over the disclosure of the parent application (document D3) and document D5a.
• "because the method of claim 1 of the patent was not entitled to priority contrary to the disclosure of Example 3 of the parent application, the latter anticipated the claimed method due to a "poisonous priority"."
• It is however contested, whether or not decision G 1/15, [] applies to the present case at all,
• claim 1 as granted relates to a method for preparing a biosensor. This method comprises as an embodiment the use of GLD or variants thereof that lack any galactose, glucose, mannose and arabinose since the content of these sugars is defined as "10 myg or less per myg of protein", which includes 0 myg/myg GLD, i.e. a "sugar-free" GLD.
• I understand that the values for these sugars are not given in the example and that this feature is added compared to the priority document.
• " [if] the disclosure of a sugar-free GLD in Example 3 of the parent application (D3) falls necessarily within the subject-matter of claim 1, then this applies likewise to the sugar-free GLD of Example 3 of the patent application too. Moreover, since both Examples 3 are identical to Example 2 of the priority document (D4/D4a), claim 1's embodiment of a sugar-free GLD is present in the priority document too."
• "In light of these considerations, the embodiment of claim 1 using a sugar-free GLD for the preparation of a biosensor must be regarded as an "OR" claim as defined in G 1/15 (Reasons 5.2.1), since sugar-free GLD is an implicitly disclosed feature in Examples 2 and 3 of the priority document and the patent application, respectively. Consequently, this embodiment of claim 1 is entitled to partial priority (see decision G 1/15, Reasons 6.4). Therefore, the parent application (D3) cannot anticipate the claimed method."
• "A skilled person reading Example 2 of the priority application (and Examples 3 in the parent application and the patent application) [...] immediately understands that the GLD recombinantly produced in E. coli is sugar-free (i.e. not glycosylated) although this is not explicitly mentioned. The production of sugar-free GLD in E. coli is thus the clear and unambiguous consequence of the explicit disclosure of this working example in view of E. coli's generally known inability to produce glycosylated proteins. It is established case law that such a feature is implicit[ly disclosed]".
• This implies that the feature could be added to the example without violating Article 123(2) EPC.
• "It is uncontested that proteins recombinantly produced in E. coli are not glycosylated ("sugar-free", i.e. lack any galactose, glucose, mannose and arabinose residues as referred to in claim 1), because E. coli does not contain the enzymes required for glycosylation, i.e. for adding sugar residues to a protein. This belongs to the common general knowledge of the skilled person. Furthermore, the absence or presence of sugar residues on a protein are a structural feature of this protein."
  
  
• The decision also contains an extensive analysis of novelty over D5a, which is found to be a non-enabling document, and of inventive step over D5a. 

EPO 

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

T 1708/18 - Standard of proof for anticipation by inherent feature

Key points

• Claim 5 is directed to: "An isolated antibody that binds specifically to the isolated polypeptide of SEQ ID NO:2 or SEQ ID NO:4."
• In other words, no structure of the antibody is specified at all in the claim.
•  "The opposition division considered that the subject-matter of claim 5 was novel over the disclosure of each of the documents cited by the opponents, including document D3"
• "According to the opposition division, the opponents "did not show beyond doubt that one of the antibodies disclosed in documents D3, D5, D6, ... or D35 is able to bind the antigen of SEQ ID NOs:2 or 4". "
• The Board: "The question of whether or not a given known antibody binds to a particular polypeptide is a question of fact. It is correct that the inherent binding property of the antibody concerned must be demonstrated by the party making the allegation, i.e., in the case at hand, the burden to prove that the antibody disclosed in document D3 binds to the PCSK9b and/or PCSK9c polypeptides lay with the opponents"
• " however, the standard of proof generally applied at the EPO for deciding on an issue of fact is the balance of probabilities."
• "According to this standard, the EPO must base its decisions on statements of fact which, based on the available evidence, are more likely than not to be true"
• As a comment, see also  T 0768/20: "“the board wishes to point out that the practical relevance of the distinction between the "balance of probabilities" standard and the "beyond reasonable doubt" standard is often overestimated. Both standards are only fulfilled if the deciding body is persuaded that the alleged fact is true, which is not a matter of "just tipping the balance slightly".
• "The board is not persuaded by the arguments of the opposition division and the patent proprietor that, by way of exception, a higher standard must apply in the present case."
• "the opposition division appears to mix up two issues which are distinct and unrelated: i) the issue of which standard of disclosure applies when assessing the legal question of novelty, and ii) the issue of which standard of proof applies when assessing evidence and factual questions. The fact that the standard of disclosure required for a finding of lack of novelty (or for allowing an amendment to the application under Article 123(2) EPC) is the standard of a direct and unambiguous disclosure is immaterial to the question of which standard of proof applies when considering evidence and factual issues in the context of novelty (or inventive step)."
• The Board notes that T 464/94 held that: "In the board's view, it is not justifiable to decide whether a document is prejudicial to novelty on the basis of probability. When a patent is revoked for lack of novelty, the department concerned has to be sure, having taken all the facts and arguments put forward during the proceedings into consideration, that the revocation is justified. In case of doubts, further clarification of the factual situation must be carried out; otherwise, the patent cannot be revoked for lack of novelty".
• As a comment, see Guidelines G-VI,6, "the lack of novelty may be ... implicit in the sense that, in carrying out the teaching of the prior-art document, the skilled person would inevitably arrive at a result falling within the terms of the claim. An objection of lack of novelty of this kind is raised by the examiner only where there can be no reasonable doubt as to the practical effect of the prior teaching".
• "this board notes, however, that it is not clear whether the deciding board [in T 464/94] was referring in this statement to the assessment of legal issues in the context of novelty, such as the question of whether the skilled person would have directly and unambiguously derived a specific piece of information from a document, or to the assessment of factual questions, such as whether particular information was published on a specific date, whether a given process resulted in a particular product or whether the product concerned had a specific property. This board is therefore not persuaded that the board in decision T 464/94 indeed adopted an approach to the assessment of factual questions that was different from that which this board intends to follow.'
• "The factual question to be decided upon in the present case is whether it is more likely than not that a known PCSK9 antibody would bind specifically to the PCSK9b and/or the PCSK9c polypeptide. In assessing this question, any evidence submitted by the parties is considered by the board and such evidence does not necessarily have to be in the form of "wet lab" experiments, as argued by the patent proprietor."
• "The question must be answered in the affirmative in the board's opinion, for the reasons set out in the following."
• "The polyclonal antibody disclosed in document D3 recognises an epitope determined by the linear sequence of a peptide (see point 24. above), which is fully contained within the PCSK9b and PCSK9c polypeptides (see point 25. above). In view of this factual assessment, the board considers that it is more likely than not that this antibody, the availability of which had not been questioned, also specifically binds to the PCSK9b or PCSK9c polypeptides, at least in a so-called "Western blot"[]." 
• The patent is revoked.
• As a comment, the Board seems correct in that the current case law is not entirely consistent about the standard of proof with respect to prior art.

EPO 

The link to the decision is provided after the jump.

T 1303/18 - Disclosure of a compound, inherency for Art.54 and Art.123(2)

Key points

• The question is whether the priority is valid.
• "The appellant [proprietor] argued that there was no doubt that the claims as granted and the whole disclosure of [priority application] D49 concerned the same invention within the meaning of Article 87(1) EPC and opinion G 2/98, namely, polymorphic form II of rotigotine."
• "In claim 1 as granted (point II above), the claimed compound is said to be polymorphic form II of rotigotine and is defined by at least one of four properties, namely: (a) a certain X-ray powder diffraction spectrum comprising four peaks with an error margin of ± 0.2, said to be measured with Cu-Kalpha irradiation (1.54060 Å); (b) a Raman spectrum comprising specific peaks with an error margin of ± 3 cm**(-1); (c) a DSC peak with a certain Tonset with an error margin of ± 2°C; (d) [a melting point of 97°C ± 2°C]."
• The Board: "Comparing the definition in terms of property (a) given in claim 1 as granted with the above disclosures in D49 reveals the following differences. - The set of peaks defined for the X-ray powder diffraction spectrum in claim 1 as granted is a set of four peaks, while that in the above disclosures of D49 is a set of 14 peaks. 
• The Board also considers property (b) (Raman spectrum), finding differences; the same applies for properties (c) and (d).
• As to the melting point:  "The melting point is not disclosed [in D49]" ... "no basis exists in D49 for  a melting point of 97°C ± 2°C as defined in claim 1 as granted"
• " in the current case, it is the subject-matter of claim 1 as granted that has to be directly and unambiguously derivable from D49. The appellant [proprietor] pointed out that the patent and D49 disclosed the same methods for characterising the mentioned polymorphic form and that the same figures resulted from this characterisation, thus demonstrating identity of the invention. However, the fact that the same characterisation methods like X-ray diffraction, Raman spectrum and DSC calorimetry are used to describe the disclosed compound in both the patent and D49 plays no role when assessing the above requirement. Also the fact that the patent and D49 share the same figures is irrelevant; what is decisive is whether or not, using common general knowledge, a compound as defined in claim 1 of the patent is directly and unambiguously disclosed in D49 as a whole."
• " The appellant argued that identity between the claimed compound and the compound disclosed in D49 was already evident from the fact that the polymorphic form of rotigotine was designated as form II in both claim 1 as granted and D49. While alleged discrepancies in the definition of form II were merely due to the different sets of analytical data used for defining form II, this did not change the fact that the same compound was disclosed. A polymorphic form of a given compound remained the same regardless of the method used for characterising it."
• "Contrary to the appellant's view, it is the set of analytical data chosen to characterise the compound that gives the skilled person the information necessary to identify the compound referred to. For the reasons set out above, the set of analytical data used in claim 1 as granted is not directly and unambiguously disclosed in D49. Therefore, it cannot be concluded that the compound defined in claim 1 as granted is the same compound as disclosed in D49."
• "the appellant submitted that structural properties allegedly lacking in D49 were implicitly disclosed to the skilled person since they were inherent to polymorphic form II and accessible by using the disclosed analytical methods. "
• As a comment, this argument may run foul of the rule that amendments may not add technical information (G2/10 r.4.5.1). Even if a compound inherently exhibits a  melting point of 97°C, adding a statement to that effect to a patent text may still violate Art. 123(2). However, this position may be controversial. A possible counter-argument could be that there is no change of subject-matter because there is only a single compound "rotigotine form II". This raises, in turn, the epistemological question of what is a compound? And what is the scope of a patent claim directed to a particular polymorphic form of a compound, and how this scope depends on the definition of the polymorphic form? 
• "This argument is not convincing either. Priority has been claimed from a written disclosure (D49) and it is from this disclosure that the skilled person should have been able, at the relevant date, to derive directly and unambiguously, using common general knowledge, the subject-matter of claim 1 as granted. However, as set out above, D49 does not disclose the same compound as that defined in claim 1 as granted."
• "Moreover, even assuming that the skilled person could have been in a position to analyse a sample of the rotigotine form II disclosed in D49, the skilled person would have obtained, inter alia, the whole X-ray powder diffraction spectrum and Raman spectrum (which are in fact represented in figures 1 and 5 of D49). However, for the reasons given above, these whole spectra do not constitute an adequate basis for the definition of the polymorphic form of rotigotine as given in claim 1 as granted. "
• "the board sees no inconsistency in the way the opposition division assessed the validity of priority on one hand and the novelty of the claimed subject-matter on the other. In fact, in terms of novelty (see corresponding point below), the relevant prior art is a sample of a polymorphic form of rotigotine, which could have been analysed by the skilled person so as to obtain, inter alia, its whole X-ray powder diffraction spectrum and Raman spectrum. These whole spectra were found by the opposition division to anticipate the definition of the polymorphic form of rotigotine as given in claim 1 as granted."
• "The application of one and the same standard for Articles 54 and 87 EPC does not, however, mean that the conclusions for novelty and validity of priority must necessarily be the same. More specifically, [] a priority application can directly and unambiguously disclose something falling within the scope of a claim of a subsequent application and thus anticipate the subject-matter of this claim while at the same time the latter still includes subject-matter not disclosed in the priority application, such that the priority is invalid."
• In the case at hand, the priority application was not published and not cited as novelty-destroying, so the Board is considering a hypothetical novelty objection if D49 was prior art. Indeed, the compound disclosed in D49 would inherently have the melting point specified in claim  1 (leaving aside that claim 1 specifies four alternative features) and hence inherently fall within the scope of the claim even if D49 does not disclose the melting point.
• The OD had found that: "The subject-matter of claim 1 of the main request and claim 1 of auxiliary requests 1 and 2 was not novel over the public prior use of rotigotine form II in commercial Neupro**(®) patches which occurred between the earliest and the subsequent priority date."

Partial priority / admissibility

• The Board did not admit the argument based on partial priority:  "In its letter dated 21 August 2020 (point 1.2.1.3 on pages 11 to 14), i.e. after the filing of the grounds of appeal and replies and before the summons to oral proceedings was issued (6 December 2021), the appellant argued for the first time that, should the priority from D49 be considered invalid, the subject-matter of claim 1 as granted should at least be entitled to a partial priority from D49 in accordance with decision G 1/15." The Board: "Decision G 1/15 was published in the Official Journal of the EPO in 2017, i.e. before the oral proceedings held on 15 February 2018 before the opposition division. Therefore, the appellant's defence claiming a right to partial priority could and should have been presented before the opposition division or included at the latest in the statement of grounds of appeal, so as to comply with the requirement to present the complete case at the outset of the appeal proceedings."
• " In its letter dated 21 August 2020, the appellant did not indicate any reason why the defence asserting a right to partial priority was only filed after its statement of grounds of appeal."
•  "The appellant [proprietor] argued that this defence did not constitute an amendment of its appeal case. It only concerned interpretation of law by means of an argument based on a decision of the Enlarged Board of Appeal. Therefore, the appellant was allowed to make this defence at any point during the proceedings. "
• " Contrary to the appellant's view, the defence by which a right to partial priority was invoked was not merely a presentation of a new argument pertaining to the interpretation of law but comprised a new allegation of fact. The appellant namely asserted that priority application D49 directly and unambiguously disclosed in an enabling manner part of the subject-matter of claim 1 as granted, and specifically that claim 1 as granted encompassed this part as an alternative subject-matter by virtue of a "generic "OR"-claim" within the meaning of decision G 1/15 (order). Therefore, the submitted defence would have involved a new factual assessment of the subject-matter of claim 1 as granted and of priority application D49, namely as to precisely which part of claim 1 it was that allegedly enjoyed partial priority and where it was disclosed in D49."
• " As pointed out by the respondents, this new factual assessment would have been complex. This was evident from the fact that in some aspects the subject-matter of claim 1 as granted had been restricted as compared with the disclosure in D49 by inserting characteristics of the claimed compound such as a melting point and further Raman peaks which were not disclosed in D49. 
• As a comment, as the public prior use is full prior art (Art.54(2)) for those parts of the claim for which the priority is invalid, the prima facie relevance of the arguments is not entirely clear. 

EPO 

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

T 3035/19 - Two lists and no pointer

 Key points

•  In a way, this case feels like T 1676/08  redux, in that the patent is about oxycodone (leaving aside the political controversy about such medicaments) and Art. 123(2) and that the patent in suit has about 13 proprietors.
• The proprietors are different legal entities for almost every designated state of the European patent, all belonging (it seems) to the same enterprise. Speculation for the reasons for this legal structuring are beyond the ambit of this weblog.
• There are also 11 opponents.
• “ the opposition division decided the following. Regarding claim 1 of the main request, the earlier application as filed did not make directly and unambiguously available to the skilled person the teaching that in order to significantly reduce opioid induced obstipation without compromising analgesic activity for pain treatment, a fixed weight ratio oxycodone/naloxone 2:1 had to be used. Arriving at the combination of the features pertaining to weight ratio 2:1 and to reducing opioid induced obstipation required simultaneous selections from several independent lists.”
• “ "Opioid induced obstipation" is synonymous with "opioid induced constipation", abbreviated OIC.”
• The Board: “Here, the earlier application as filed discloses several oxycodone:naloxone ratios, including the ratio of 2:1 (see page 16, lines 19-21), and lists several side effects, one of which is OIC (see page 9, lines 15-17). However, the fact that each of these two features of claim 1 of the main request is, individually, disclosed in the earlier application as filed is not sufficient to conclude that their combination is also derivable from the earlier application as filed.”
• “While the notion of selection from two lists is not meant to take the place of the gold standard, it provides valuable guidance and finds wide application in case law for the assessment not only of added subject-matter but also of novelty (see the landmark decision T 12/81 [and CLBA ] I.C.6.2). Consequently, in view of the importance of applying a uniform concept of disclosure for the purposes of Article 54 and 123(2) EPC (see G 2/10, []), and by the same token Article 76(1) EPC, the Board considers that a departure from this established criteria for selection inventions in the assessment of added subject-matter is not appropriate.”
• “The Board emphasizes that the combination of features resulting from selections in two or more lists, or pertaining to separate embodiments, only introduces added subject-matter in the absence of a pointer to that particular combination. Thus, an amendment based on the combination of two items disclosed in the earlier application in two lists of some length, may still be considered to comply with the requirement of Article 123(2) EPC (or 76(1) EPC) if the earlier application contains a pointer towards this combination. In other words, the concept of selection from lists must be applied with due regard to the whole content of the earlier application as filed.”
• “As explained in T 598/12 (see point 4.3.6 of the reasons), what has to be judged is whether the notional skilled person working in the field would consider something as directly and unambiguously implicitly disclosed in the light of his common general knowledge. The assessment of what information is implicitly disclosed in an application cannot go beyond the limits of what the skilled person would objectively understand to be a direct and unambiguous consequence of the explicit disclosure in the particular case. Moreover, when performing this assessment, the common general knowledge cannot serve to enlarge or replace, in a subjective or artificial manner, the actual content of the specification.”

T 3035/19 -

https://www.epo.org/law-practice/case-law-appeals/recent/t193035eu1.html

decision text omitted.