T 0377/18 - Post-published evidence

Key points

• Inventive step is at issue in this pharma case. Claim 1 is directed to “ a composition comprising a solid dispersion comprising at least [regorafenib] in substantially amorphous form and a pharmaceutically acceptable matrix”.
• D5 is the closest prior art. “The compounds described under entries 42 and 49 [of D5] differ from regorafenib only in a substitution on one of the aryl rings (being hydrogen or chlorine instead of fluorine). ... Concerning the formulation of these actives, some general information is given on page 10, line 10 to page 12, line 29 [of D5]. Solid dispersions are not mentioned.”
• “either Formula (I) [a broad Markush formula] or any of the 103 compounds, in particular the closely-related compounds of entries 42 and 49 [of D5], can be taken as the starting point in the present case”
• Note that the c.p.a. is indeed an embodiment,  not a document as a whole.
• On to the plausibility issue (or closely related issue, in any case, see the G 2/21 referral): “Firstly, it will be discussed whether any surprising effect can be acknowledged to be linked to the difference in [molecule] structure”
• “The application as filed does not explicitly identify any surprising effects linked to the structure of the active agent.”
• “the respondent [patentee] presented data which according to it demonstrated the superiority in activity of regorafenib as compared with compound 49 (Tables 1 and 2). Having been submitted for the first time in the reply to the grounds of appeal, the data are clearly post-published. As they present data on an effect that cannot be derived from the application as filed, despite document (5) being discussed in the background section, the data are to be disregarded.”
• “No information is provided [note: in para. [0004] of the patent, as I understand] as to whether regorafenib is capable of inhibiting raf or any of the other three kinases in a way different from the cited background art (including document (5)) and/or whether such inhibition would lead to any improvement in the treatment. In fact, the application as filed contains no statement relating to and no data confirming the extent of the inhibition or indicating that this inhibition would lead to an improvement in the treatment of any hyper-proliferative disease. The appellant has furthermore pointed to the fact that there was no evidence that regorafenib inhibited these four kinases at all.”
• D5 is cited on page 2 at the top of the application as filed, in a section that merely lists a number of prior art references without much discussion or analysis.
• “The board thus comes to the conclusion that an improvement over the compounds of document (5) was neither foreshadowed, nor alleged, nor shown in the application as filed. Document (5) is not merely a document that could have been considered by the patent proprietor (or the then applicant) when drafting the application, but a document that actually was considered as can be seen by its being cited in the background section. Since, as a consequence, post-published evidence cannot be taken into account, none of the effects related to improved treatment (different pattern of inhibition, second-line treatment, higher levels of inhibition) can be considered when applying the problem-solution approach.”
• The feature of a solid dispersion does not provide for an inventive step either. The Board, as part of a detailed analysis, notes that “Document (6) thus clearly teaches that solid dispersions are a galenic form worth exploring when trying to provide a formulation of a poorly soluble drug.”
• The patent is revoked.
• The application was filed in 2005, the decision to grant was issued in 2015.
  
  
• Furthermore, non-anonymous third party observations filed after the summons for oral proceedings in appeal are not admitted: “ In addition, a third party is not an actual party to the proceedings, and as such should not be accorded more favourable treatment than an actual party.”

EPO T 0377/18

Link to the decision after the jump, as well as the text of the decision.

G 2/19 - Decision - Haar for oral proceedings

Key points

• The Enlarged Board announced at the end of the oral proceedings on 16 July 2019 that holding oral proceedings before the Boards in Haar does not violate Article 113(1) and Article 116(1) EPC.
• The Board also decided that the appellant in the underlying case has no right to oral proceedings under the (rather specific) facts of the case, that the Notice of appeal was filed by a third party to the examination proceedings appealing the grant of the patent with the request for re-entry into the examination proceedings to address clarity issues. Moreover, the appeal has no suspensive effect.
• The reasoned written decision will follow in due course.

1. Ein Dritter im Sinne von Artikel 115 EPÜ, der gegen die Entscheidung über die Erteilung eines europäischen Patents Beschwerde eingelegt hat, hat keinen Anspruch darauf, dass vor einer Beschwerdekammer des Europäischen Patentamtes mündlich über sein Begehren verhandelt wird, zur Beseitigung vermeintlich undeutlicher Patentansprüche (Artikel 84 EPÜ) des europäischen Patents den erneuten Eintritt in das Prüfungsverfahren anzuordnen. Eine solchermaßen eingelegte Beschwerde entfaltet keine aufschiebende Wirkung.
2. Mündliche Verhandlungen der Beschwerdekammern an deren Standort in Haar verstoßen nicht gegen die Artikel 113 (1) und 116 (1) EPÜ. 

EPO BoA News item (link)

T 1830/13 - Document from TPO's

Key points

• In this opposition appeal, TPO's were filed in November 2017 also submitting a new document D21.
• In December 2018, one day before the oral proceedings, the opponent files D21.
• The Board admits D21 because it is highly relevant. 
• " The board notes that the appellant's request to admit document D21 was submitted very late and that it represents an entirely fresh case. Such considerations would normally result in the non-admission of a document" 
• " Although no party appears to have studied document D21 until shortly before the oral proceedings, this document is considered by the board to be of such relevance for the issue of novelty that the board should not exercise its discretion under Article 114(2) EPC to disregard it. Thus, the board decides to admit document D21 into the appeal proceedings." 
• The Board remits  the case. 

EPO T 1830/13 -  link

Summary of Facts and Submissions

I. The opponent (hereinafter appellant) appealed against the decision of an opposition division to maintain the European patent No. 1 975 231 in amended form.

II. The patent proprietor (hereinafter respondent) replied to the appellant's statement of grounds of appeal.

III. Several third party observations were submitted under Article 115 EPC. The third party observations submitted under cover of a letter dated 3 November 2017, included the document WO 02/066516, published on 29 August 2002. This document is referred to in the submissions and in this decision as document D21.

VI. On 4 December 2018, one day before the oral proceedings, the appellant submitted a request that document D21 should be admitted into the proceedings. The appellant argued that this document was highly relevant as regards the novelty of the patent in suit. The appellant pointed out that this document had been brought to the attention of the parties over a year earlier, and was hence no surprise, and further argued that it did not raise any complex issues requiring postponement of the oral proceedings.

Reasons for the Decision

Request for costs

1. The board notes that the respondent's request for costs was received one day after the board had heard the parties final requests, closed the debate, and had announced its decision. Moreover, it differs from the respondent's final requests submitted in the oral proceedings before the board (see minutes, page 2, fourth paragraph).

2. According to the case law of the Boards of Appeal, once a decision has been taken the board is no longer empowered or competent to take any further action apart from drafting the written decision (cf. "Case Law of the Boards of Appeal of the EPO", 8th edition 2016, IV.E.6.1.2, 1165). It is established practice that all the parties' requests, including any requests as to costs, must be made before any decision is announced in oral proceedings (cf. "Case Law", supra, IV.C.6.3.1, 1000).

T 0694/10 - Anonymous TPO in appeal

Key points

• In this opposition case, the Board disregards anonymous third party observations because they are not relevant.
• Note that in T 1439/09 and T 146/07, the Board had held that anonymous third party observations in appeal are to be disregarded anyway as they are anonymous (irrespective of their relevance). The present decision seems to open the possibility of such observations being considered by the Board, if they are relevant.

EPO T 694/10 - link

Entscheidungsgründe

[...] 3. Einwendungen Dritter

3.1 Nach der Ladung zur mündlichen Verhandlung wurden anonyme Einwendungen Dritter nach Artikel 115 EPÜ gegen die Patentierbarkeit der beanspruchten Erfindung erhoben.

3.2 Im vorliegenden Fall waren die Einwendungen Dritter für die Entscheidung nicht relevant und wurden daher auch nicht berücksichtigt.

EPO Case Law week 19

Noteworthy decisions of week 19 (published 04.05 - 08.05.2015)

T 1756/11 - [C; DE] - third party observations in opposition and opposition appeal - third party observations filed during opposition appeal procedure are normally disregarded, unless they consider claim amendments, or unless parties take position regarding facts or evidence contained in the observations. (Articles 115, 113, 114 EPC, G9/91).

T 0262/13 - Scope of protection extended by specifying a component in more detail (based on T 2017/07) - not: specific salts were already included in dependent claim 3, so claim 3 had same scope. Feature "applying a salt to at least one of said surfaces of said film; said salt comprises between 0.5% and 15% of the weight of said film, wherein said salt is selected from the following group: consisting of: [...]  does not allow use of salts other than those listed, according the board. (Article 123(2))

T 0617/11 - Claim directed to containing laundry tablets, the container having essentially a window with a matching color, for improving visual appearance. Not excluded aesthetic creation presentation of information, as the claim recites a "container" (Article 52(2)(b); (d); T154/04). Board also rejects insufficiency: "[i]n executing the invention, the skilled person will not have the wish to make the invention not work, i.e. he will not locate the viewing region in the container at a position where the tablets cannot be seen; he will not choose light transmissivity materials which will not have the desired effects." Lack of novelty because distinguishing features are aesthetic - fresh ground of opposition not admitted. Objective technical problem of accentuating colour difference is accepted. Claimed container.  is non-obvious. 

T 0992/12 - Examination appeal - refusal of claim including disclaimer (negative features) which was contained in the application as filed - unallowability of disclaimer to exclude non-working embodiments (G1/03) does not apply if disclaimer is contained in application as filed - "the Board is not aware of a provision of the EPC requiring a European patent application to also provide a full disclosure of the reasons for which a claim of the application as filed was drafted to comprise limitations expressed in terms of disclaimers".

T 0081/14 [B] - Claim 8 is directed to the use of the sintered cemented carbide body obtained according to the method of any one of claims 1 to 7 for the production of a cutting tool. The rule that a product may only be defined as a product-by-process claim if it can not be defined by structural features, applies as well to a claim direct to use of such a product. 

T 0275/12 - If the patentee-appellant requests revocation in appeal, this is to be taken as the withdrawal of the appeal according to established case law. The appeal procedure is terminated. 

T 1677/13 - A technical effect brought forward by patent proprietor for the first time at oral proceedings in opposition-appeal is disregarded as late-filed.