|An advantage of being a Kat is the|
ability to wave and wash ears
Back in March, this Kat wrote a piece covering the EPO Board of Appeal decisions posted online in January and February 2012 that had caught his eye. Some readers were kind enough to welcome this and ask for such pieces to continue. So, as his farewell, here is coverage of the decisions posted from March to June. The only criteria for inclusion is interest to this particular moggy. They are in approximate reverse chronological order of online posting. There are rather a lot, but then again the Boards of Appeal have been very busy this year.
A patent in the name of Alcon Laboratories concerning fluprostenol isopropyl ester for topical application for the treatment of glaucoma and ocular hypertension was opposed and revoked. The claim as granted specified that fluprostenol isopropyl ester was the “sole active ingredient”, and this was held by the Opposition Division to constitute added matter. The Board of Appeal disagreed with the Opposition Division and found that, although “sole active ingredient” was not mentioned expressis verbis in the application as filed, monotherapy was the preferred method of administration disclosed in the application. Therefore there was no added matter. The case was remitted to the first instance.
A patent in the name of Colgate-Palmolive Company relating to pearlised cleansing compositions was opposed by The Procter & Gamble Company and Sasol Germany GmbH. In all the requests before the Board of Appeal, the open language “comprising” of claim 1 as granted had been changed to “consisting of”. Integer (g) of claim 1 both as granted and in all the requests read “optionally, one or more members selected from the group consisting of an effective amount of a pH modifying agent; an effective amount of a viscosity modifying agent; an effective amount of a preservative; fragrance; and a coloring agent”. The Board of Appeal held that the change in claim wording meant that integer (g) became important for defining the limits of the claimed composition. This resulted from the amendment made, and therefore the clarity of the integer was examinable by the Board of Appeal even though clarity is not a ground of opposition. The integer was found to be unclear and the patent was revoked.
A patent of Bristol-Myers Squibb Company opposed by Bayer Health Care, directed towards a composition containing a statin and aspirin in the form of a bilayer tablet or capsule containing separate statin and aspirin granules, was revoked on the grounds that it was not substantiated that there was an incompatibility between the drugs such that the claimed formulations provided improved stability.
This case, concerning possibility of correction where appeal was filed in the wrong name, resulted in a referral to the Enlarged Board of Appeal noted by the IPKat here.
In this case involving a claim to a genus of compounds with pharmaceutical activity, a disclaimer was not permitted to exclude prior art that related to pharmaceuticals of a completely different type from the field of the claimed invention. The prior art was not considered to be an accidental anticipation. It was stated “The board therefore agrees with the conclusion reached in T 134/01 (see Reasons point 2.3), namely, that a further document belonging to the field of pharmaceuticals is not to be considered as being an accidental anticipation within the meaning of the decision G 1/03, that is, even if it does not relate to the same illness or biological pathway as the patent or application in suit.”
This is a short decision describing how claims that are amended too much on appeal may not be admitted. In this case, the Board did not admit the claims of the request filed with the Grounds of Appeal, pursuant to Article 12(4) RPBA (the board can hold inadmissible facts, evidence or requests which could have been presented in the first instance proceedings), because “the amendments did not cause the procedure to converge, but instead created a new case on appeal.”
This is a case where the Appellant appears to have simply re-presented as the grounds of appeal arguments already presented to the Examining Division, and filed no new claims. Because the reasons in the decision of refusal were not addressed, the Board considered that the grounds of appeal were not sufficiently reasoned and ruled the appeal inadmissible.
In this case, an application was filed that referred to Figures 13 and 14, but such Figures were not filed. Instead of filing missing parts (i.e. the apparently lacking Figures), the applicant filed a new description corresponding to the description of the priority application. The Receiving Section did not consider these “missing parts”, and the Board of Appeal agreed. However, the Board decided that the Receiving Section (or, if the matter proved too technical, the Examining Division) should “specify exactly what references to drawings 13 and 14 in the description and/or claims filed on 13 August 2009 should be deleted pursuant to Rule 56(4)(a) EPC.”
This decision contains interesting comments (at 2.5-2.7) on whether a problem can be taken as implementing an aim if no technical effect is apparent from the specification, stating “An effect cannot be validly used in the formulation of the technical problem if the effect requires additional information not at the disposal of the skilled person even after taking into account the content of the application in question.”
The Board of Appeal continued with the examination of this appeal, even though the underlying patent application had lapsed for non-payment of renewal fees, because a substantial procedural violation had been alleged, and a refund of the appeal fee requested. The decision says:
If a European patent application is finally deemed to be withdrawn after an admissible appeal against a decision refusing it has been filed, the appeal can usually be considered disposed of, because there is no possibility of a European patent being granted for the application. (See points 4 and 5).However, the Board considered that no substantial procedural violation had occurred. The alleged violation consisted of the Examining Division introducing a new document (D5) in first instance Oral Proceedings, and, while offering the representative time to study it, refusing to adjourn and continue in writing. The Board stated: “The applicant does not have a right in principle to continuation in writing if the department of first instance introduces a new document for the first time in oral proceedings and thereby changes the subject of the proceedings.” Furthermore, the Board did not permit the applicant to change its case to allege that D5 had been referred to in relation to novelty rather than, as the Board supposed, to substantiate common general knowledge. New submissions in this regard at Oral Proceedings were not accepted.
However, where, as in the present case, the sole aim of the appeal is to obtain a finding by the board of appeal that a substantial procedural violation occurred in the first-instance proceedings, such that the appealed decision is to be set aside and the appeal fee reimbursed, the appeal cannot be dealt with in this way. In these circumstances the appellant has a legitimate interest in receiving a decision on the merits of the appeal. Therefore the appeal must be examined and the appeal proceedings cannot be closed without a substantive decision on the case. (See points 6 to 9).
In this interesting case, the Board of Appeal held that the common general knowledged alleged by the Examining Division had not been substantiated. The conclusion was:
The board remits the case to the first instance for further prosecution so that the examining division will have the possibility to procure evidence that the alleged system including feature (ii) was common general knowledge. If such evidence turns out to be available, the examining division will have the opportunity to back up its arguments, clarify and modify those arguments to take account of the actual features disclosed by that evidence, and further consider the newly claimed feature (iii). On the other hand, if no such evidence is found, it appears that the examining division will have to acknowledge that the claimed subject-matter involves an inventive step.The case was thus remitted to the department of first instance for further prosecution.
An application which has been deemed to be withdrawn for non-payment of a renewal fee is not pending within the meaning of Rule 25(1) EPC 1973 in the period for filing a request for re-establishment of rights under Article 122 EPC 1973 in respect of such non-payment or in the period after which such an application is filed in the event of such request being refused.
|So long, and thanks for all the fish.|
So, my thanks again to the IPKat readers, all the the IPKat team, and to Jeremy, for all the fun I have had over the last few months. I have really valued the opportunity to consider and share a multitude of legal issues and developments, both inside and outside my usual areas of interest. I am most grateful to you all.