T 0424/21 - First medical use claims revisited

Key points

• In this opposition appeal, claim 5 reads:  "The antibody or Fc fusion protein according to any one of claims 1-[] for use as a medicament." 
• The Board gives a tutorial on first medical use claims, i.e. claims reciting "for use as a medicament".
• " Claim 5 is formulated in the form of a first medical use ("for use as a medicament") according to Article 54(4) EPC ("for use in a method referred to in Article 53(c)"). In view of the above finding with regard to the sufficient disclosure of the antibody and Fc fusion protein as such, it remains to be analysed whether those compounds are suitable for use as a medicament."
• " The patent shows that the PGLALA mutations can be introduced into known therapeutic antibodies having a human IgG1 Fc region and that an antibody of this kind provides relevant medical effects such as reduced Fc receptor affinity and reduced effector function, known to be useful in several therapeutic contexts " 
• " the only remaining question is whether claim 5 should be restricted to these particular therapies."  
• "The case law of the boards of appeal concerning the question of sufficiency of disclosure of a first medical use is not very extensive " 
• The Board observes that it is irrelevant that in this case, the compound (antibody) of claim 1 is also novel.
• " In decision G 5/83, Reasons 15, the Enlarged Board of Appeal stated: "Thus the inventor of a 'first medical indication' can obtain purpose-limited product protection for a known substance or composition, without having to restrict himself to the substance or composition when in a form technically adapted to a specified therapeutic purpose. The appropriate protection for him is, therefore, in its broadest form, a purpose-limited product claim. No problem arises over its susceptibility of industrial application, within the meaning of Article 57 EPC." The board interprets this statement to mean that the Enlarged Board, although not commenting explicitly on Article 83 EPC, also saw no general issue of sufficiency of disclosure for a broad first medical use claim and did not see the need for the inventor to "restrict himself ... to a specified therapeutic purpose"." 
• " Before decision G 5/83, decision T 128/82 had followed the same line of thinking: "If an inventor is granted absolute protection in respect of a new chemical compound for use in therapy, the principle of equal treatment would require that an inventor who for the first time makes a known compound available for therapy should be correspondingly rewarded for his service with a purpose-limited substance claim under [Article 54(4) EPC 2000] to cover the whole field of therapy"
• The reasoning indeed appears to be " Argumentum a maiori ad minus", with the tacit observation that a product claim covering all possible uses of the product, even uses still to be invented, is considered to be sufficiently disclosed by an enabling disclosure of the preparation method.
• " With regard to Article 84 EPC, [T 128/82 ] stated [in r.12]: "The mere fact that there are [no] instructions concerning all and any possible specific therapeutic applications does not justify limiting the scope to the therapeutic application actually mentioned. This would not be in accord with the general practice of the European Patent Office concerning therapeutically active compounds" []. Thus, although Article 83 EPC is not mentioned, this decision does not require a limitation to a specific therapeutic use either." 
• " This board cannot derive any requirement from the EPC whereby a patent would have to show that a compound is suitable for each and every disease in order for a first medical use to be sufficiently disclosed. Instead, it is sufficient to show that the compound is suitable for at least one particular medical use, as is the case in the patent at issue" 
• T 128/82 further states that: " 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." "As a general rule the usual practice as it relates to new compounds should be followed [for first medical use claims]."
• Hence, the EPO's practice was (and is) to allow compound [and composition] claims for new (and inventive) compounds (and compositions), also if it concerns new therapeutically active compounds, even though generally only certain specific activities are disclosed in the description. These compound claims are not limited to specific uses (or medical indications). 
• The same Board 3.3.04 briefly touched on the same point recently in T 0419/16:  "  A logical consequence of the availability of purpose-limited substance protection for a first medical use is that the disclosure of a single therapeutic use of a compound is both sufficient to meet the requirements of Article 83 EPC and to serve as a basis for such a claim in the sense of Articles 87(1) EPC and Article 123(2) EPC, respectively." It may be added that a single inventive therapeutic use of a compound is also sufficient to meet the requirement of inventive step of such a first medical use claim. 

EPO 

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

Scaling down to weekly posts

Key points

• I will post here weekly for the time being, as I have a book to edit in my spare time. 
• Posts are scheduled for Mondays.

T 1108/20 - Closed-circuit e-commerce entity

Key points

• The title of the application in this appeal is "METHOD AND STRUCTURE FOR SIMPLIFIED CODING OF DISPLAY PAGES FOR OPERATING A CLOSED CIRCUIT E-COMMERCE"
  
• Claim 1 begins with:  "A method for connecting and operating a closed circuit e-commerce entity comprising at least one shopping terminal, at least one provider and at least one entity center" 
• The Board, however, finds claim 1 to be inventive. The decision may illustrate that non-technical features do not contribute to inventive step under the Comvik approach, but there is, strictly speaking, no penalty for specifying non-technical features under the Comvik approach either if the claim additionally recites non-obvious technical features.
• Claim 1 specifies that "said shopping terminal including a touch screen, a CPU and a second memory is connected with said building server via an interface including a CPU and a first memory"
• The Board: "the board considers that the "CPU" mentioned in distinguishing feature (ii) can only be interpreted as relating to an additional CPU, i.e. in addition to the regular CPU that each server - including the server disclosed in document D2 - possesses. The same applies analogously to the "memory" mentioned in distinguishing feature (iii)."
• "The objective technical problem is how to support a large number of kiosks without overwhelming the server. This problem is solved by distinguishing features (ii) and (iii), since adding a CPU and a memory for processing kiosk requests at the interface reduces the load on the server CPU. However, neither this problem nor its solution are disclosed or hinted at in the prior art at hand."
• "Therefore the board concludes that the subject-matter of claim 1 involves an inventive step."
  
  
• As to the description: "The board notes that the [allowed set of claims] basically corresponds to the claims originally published and that the description as published supports these claims. Hence there is no need to adapt the description to the present claims in order to meet the requirements of Article 84 EPC in the present case." (italics added)
  
  

EPO 

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

T 1436/18 - (II) Legitimate reaction to appealed decision

Key points

• The Board admits AR-6 filed with the appeal, under Art. 12(4) RPBA 2007.
• The Board essentially finds AR-6 to be a legitimate reaction to a point that became clear only in the written decision of the OD.
• In AR-6, the product claims were cancelled; only the method claim was maintained (corresponding to claim 6 as granted).
• "Claim 6 as granted was objected to and discussed between the parties since the beginning of the opposition proceedings. The decision under appeal deals with both the device claim and the method claim as granted. Even if claim 6 during oral proceedings mainly was discussed in amended form [...], the reasoning in the impugned decision for novelty and inventive step of the method claim is solely based on features of granted claim 6 "
• "the board follows the argumentation of the appellant 1 (patent proprietor) that the course of the proceedings gave the impression that claim 6 as granted was not considered new by the opposition division. As the main request was rejected for lack of novelty of claim 1 over E6, claim 6 as granted was not further discussed in connection with the main request. However as the preliminary opinion of the opposition division likewise was negative for claim 6 in view of E6, there was no motivation for the patent proprietor to file an auxiliary request according to AR6 during the first instance oral proceedings. AR6 is thus a legitimate reaction to the decision of the first instance from which it became clear for the first time that claim 6 as granted was considered new by the opposition division."

EPO 

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

T 1436/18 - No circumventing of Art. 12(4) RPBA 2007

Key points

• The Board, on the admissibility of auxiliary requests 2 to 5: 

  2.4.1 AR2 to AR5 are not literally, but in their gist (as explained below) identical to auxiliary request 5 (AR2), auxiliary request 7 (AR3, AR4) and auxiliary request 8 (AR5) which were withdrawn during oral proceedings [before the OD]. "

• "It is therefore not apparent why the auxiliary requests 5, 7 and 8 were not maintained pending during the opposition proceedings, or, alternatively, why AR2 to AR5 were not filed in the first instance proceedings, in order to be decided by the opposition division. In fact, it appears that the appellant 1 (proprietor), by filing AR2 to AR5 in appeal, seeks to circumvent the withdrawal of the similar auxiliary requests 5, 7 and 8 filed in opposition proceedings."

• " The board concludes that these minor amendments in AR2 to AR5 on file compared to the withdrawn requests are only of formal nature and do not justify the resubmission of subject-matter that could have been presented in the first instance and was not."

•  The requests are not admitted under Art. 12(4) RPBA 2007

• The Board, however, admitted AR-6 filed with the appeal and found those claims to be allowable.

EPO 

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

J 0007/21 - Co-applicants file divisional application

Key points

• A divisional application was filed in 2019. One of the co-applicants of the divisional application, was not the same as indicated in the Register for the parent application. The parent application was withdrawn the day after the filing of the divisional application. 
• The decision is anonymised, and all parties are referred to as "N.N." which makes the decision difficult to follow.
• The applicant argues that "N.N. was an applicant of the divisional application as N.N. had merged into N.N. as of 1 January 2018. Copies of the documents demonstrating the merger were submitted in the form of a confirmatory deed of merger dated 20 March 2018. It was requested that the application at issue be treated as a divisional application."
• "The appellants provided a confirmatory deed of merger dated 28 March 2018 (D2), which states that N.N. [new applicant] is a public institution serving scientific, cultural and professional purposes created pursuant to Decree No. 2017-596, issued by the French Ministry of Education on 21 April 2017, by merging N.N. [old applicant] and N.N. [another French university ?]."
• The Board: "In view of the above, it is therefore established that from 1 January 2018 N.N. became the universal successor in law of N.N.."
• "The board comes to the [...] conclusion that Rule 22(3) EPC does not apply in the context of universal succession, "
• "The board concludes that the notion of "transfer" in Rule 22 EPC should be interpreted as not covering universal successions, meaning that none of the requirements laid down in Rule 22 EPC for the registration of transfers is applicable. In the latter case, the effect of the change in ownership of the patent application is immediate and there is no need to postpone it to a later date on which the documents establishing that change have been provided to the EPO."
• "In view of the above, the board considers that as of 1 January 2018 N.N. automatically became the universal successor and owner of the patents and patent applications owned by N.N., including the jointly owned European patent application No. [X]  (the parent application), there being no need to request registration of the transfer, file documentary evidence and pay the fee. Therefore, the [divisional application], filed by the joint applicants N.N., on 17 September 2019 was filed by the same co-applicants as the parent application and meets the requirements of Article 36(1) EPC [sic]."
• "the application at issue must be treated as a divisional application of the earlier European patent application [], which was still pending on the filing date."
• As a comment, it is indeed established case law that acquiring the property of a European patent or patent application by way of universal succession, is neither subject to the requirement of Rule 22 that a fee must be paid for registering a transfer nor to the rule that a transfer is effective vis-à-vis the EPO only once the requirements for a valid request under Rule 22 EPC are fulfilled. As held in T 15/01, hn. II: " [Rule 22(3) EPC 2000] does not apply in the context of universal successions in law. The universal successor of a patent applicant or patentee automatically acquires party status in proceedings pending before the European Patent Office".
• The Board states that: "The board comes to the same conclusion that Rule 22(3) EPC does not apply in the context of universal succession, but not for the same reasons as those submitted by the applicant.". I understand that the Board considers universal succession to be a species of the genus "transfer of assets" (contrary to an argument of the applicant), but not a species of the genus "transfer in the sense of Rule 22 EPC".
• Rule 36(1) stipulates that "the applicant" may file a divisional application. The term applicant refers to the applicant of the (pending) parent application. Uncontested in the present decision is the rule that joint applicants can only file a divisional application acting jointly.
• Interestingly, a divisional application is apparently not published as long as it is not dealt with as a divisional application. 

EPO 

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

T 2785/17 - Sufficiency of a compound claim

Key points

• Claim 1 is directed to a class of chemical compounds, purely defined in terms of the chemical formula ("A compound of formula (II) ...". 
• The Board, notes, under inventive step, that "[t]he patent states that the compounds of claim 1 of the main request are useful as proteasome inhibitors (paragraph [0002] of the patent). Proteasomes are protein complexes which degrade intracellular proteins by proteolysis, a chemical reaction that breaks peptide bonds (paragraph [0004] of the patent)."
• Turning to sufficiency, "[t]he appellant [opponent] objected to sufficiency of disclosure of the compounds of claim 1 of the main request. It argued that the subject-matter of the claim was not disclosed in a sufficiently clear and complete manner to be carried out by a person skilled in the art across the whole scope of the claim. The appellant essentially submitted that there was no limitation on the number or type of substituents allowed in claim 1 of the main request and that the compounds encompassed by the claim would not necessarily have any physical or chemical properties in common, i.e. the properties to be used as boronic ester prodrugs to treat cancer. "
• "The board does not agree. As submitted by the respondent, the technical effect relating to the pharmaceutical activity is not incorporated in the claims of the main request, and thus whether the claimed compounds achieve this effect should not be examined under Article 83 EPC but rather Article 56 EPC."
• As a comment, see G 2/03 r.2.5.2:  " If an effect is expressed in a claim, there is lack of sufficient disclosure [if there is a lack of reproducibility of the claimed invention]. Otherwise, ie if the effect is not expressed in a claim but is part of the problem to be solved, there is a problem of inventive step (T 939/92 []). "
• "Consequently, the board concludes that the invention underlying the subject-matter of claim 1 of the main request is sufficiently disclosed within the meaning of Article 83 EPC."
• The Board also concludes that claim 1 involves an inventive step. 

EPO 

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