G 0002/88 - Second non-medical indication / "Friction-reducing additive"- #3

Citation rank: 3
No. of citations: 368

G 2/88 ("Friction reducing additive") and G 6/88 ("Plant growth regulating agent") both looked at changes in the claim category from product claim (specifically: compound or composition) to use claim, namely the use of the compound or composition for a particular purpose.

A Technical Board of Appeal in T 59/87 referred the question to the Enlarged Board of Appeal whether a patent with claims directed to a "compound" and to a "composition including such compound" can be amended during opposition proceedings so that the claims are directed to the "use of that compound in a composition" for a particular purpose, without extending the scope of protection (Art. 123(3) EPC).

The Enlarged Board found that, upon proper interpretation of Art. 123(3) EPC, and taking into account the "absolute" protection that a product claim confers, a change in category from product to use of the product does not normally extend the scope of protection. Art. 123(3) would thus not be infringed.

T 59/87 also referred another question to the Enlarged Board, namely whether novelty can be acknowldedged of a claim claiming the use of a known compound for a particular purpose over prior art disclosing the same use of the same compound, but for a different purpose. Specifically T 59/87 asked:

"Is a claim to the use of a compound for a particular non-medical purpose novel for the purpose of Article 54 EPC, having regard to a prior publication which discloses the use of that compound for a different non-medical purpose, so that the only novel feature in the claim is the purpose for which the compound is used?"

The answer to this question is by no means self-evident. For example, in case T 231/85 (referred to in G 2/88) the  claims in question related to the "Use of (certain compounds) ... for controlling fungi and for preventive fungus control" - and the application contained teaching as to how to carry this out so as to achieve this effect. A prior art document described the use of the same compounds for influencing plant growth. In both the application in suit and the prior art, the respective treatments were carried out in the same way (so the means of realisation was the same). The sole difference between the claim and the prior art was the purpose for which the claimed use was carried out. The purpose - as was argued by a party T 231/85 - is subjective and in principle merely a mental activity. It should not, according to the party, count as a technical feature of the claim. The Enlarged Board, however, decided differently. 

The Enlarged Board found that the different purpose of the claimed use establishes novelty over such prior art. In other words, a claim to the use of the compound for the particular purpose defined in the claim, which use is based on a technical effect described in the patent, is to be interpreted as including that technical effect as a functional technical feature. Hence prior art disclosing the same use of a compound, but for obtaining a different purpose, then such prior art is not novelty-destroying for the "second non-medical use" claim.

Remark: G 2/88 and G 6/88 are consistent with the earlier G 1/83, G 5/83 and G 6/83, which established similar principles for claims directed to second medical indications. The latter decisions held that the stated purpose of making a medicament recited in a "Swiss-type" claim establishes novelty over prior art disclosing the same medicament, but not disclosing the claimed medical indication (i.e., disease to be treated). See here for a brief summary of G 5/83.

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Headnote:

1. A change of category of granted claims in opposition proceedings is not open to objection under Article 123(3) EPC, if it does not result in extension of the protection conferred by the claims as a whole, when they are interpreted in accordance with Article 69 EPC and its Protocol. In this context, the national laws of the Contracting States relating to infringement should not be considered.

2. An amendment of granted claims directed to "a compound" and to "a composition including such compound", so that the amended claims are directed to "the use of that compound in a composition" for a particular purpose, is not open to objection under Article 123(3) EPC.

3. A claim to the use of a known compound for a particular purpose, which is based on a technical effect which is described in the patent, should be interpreted as including that technical effect as a functional technical feature, and is accordingly not open to objection under Article 54(1) EPC provided that such technical feature has not previously been made available to the public.

The full text of the decision can be found here.

T 0012/81 - Novelty of chemical compounds - #32

Citation rank: 32
No. of citations: 121

T 12/81 is concerned with the concept of novelty of chemical compounds, more specifically with the different manners in which chemical compounds can be disclosed in the prior art. The decision has been referred to as "the leading decision on novelty of chemical compounds" (T 132/92, r. 4.3).

T 12/81 is being cited for holding two things:

Firstly: Disclosure in a cited document of the starting substance and the reaction process also discloses the end product (point 13 of the reasons).

And secondly: Selection from two lists establishes novelty (also point 13 of the reasons).

In the underlying examination case, the applicant claimed a specific diastereomer, namely the threo-form of 1-(4-chlorophenoxy)-1-(1-imidazolyl)-3,3-dimethyl-2-butanol, which is the product of a stereo-specific hydrogenation of 1-(4-chloro-phenoxy)-1-(imidazol-1-yl)-3,3-dimethylbutan-2-one.

The Examining Division refused the application for lack of novelty over German patent application DE-A 2 333 354, which disclosed five alternative hydrogenation processes, and a list of 20 possible starting materials, one of which was 1-(4-chloro-phenoxy)-1-(imidazol-1-yl)-3,3-dimethylbutan-2-one). The applicant appealed against the decision to refuse.

The Board, upon reviewing the appealed decision, firstly observed that the novelty requirement served the purpose of preventing that the state of the art is patented again. They remarked that there are different manners of claiming and disclosing chemical compounds. One manner is by describing the compound in terms of its chemical structure and/or formula. Another way is to define the compound through the process of its manufacture (product-by-process definition).

Regarding the question of novelty of the claimed compound over DE-A 2 333 354, the Board considered that a chemical entity, which is disclosed in a prior art document through its starting material and the process of manufacture, does form part of the state of the art:

"... the disclosure by description in a cited document of the starting substance as well as the reaction process is always prejudicial to novelty because those data unalterably establish the end product." (point 13 of the reasons)

In the case at hand, where the prior art document disclosed a list of 20 possible starting materials and 5 alternative hydrogenation processes, the applicant argued that two selections had to be made to arrive at the claimed compound, namely one selection from the list of 20 starting materials and a further selection from the five alternative processes. The applicant argued that the claimed compound was therefore new.

The Board did not agree. While it conceded that if, in order to obtain a claimed compound, two starting materials have to be selected from two lists of some length, then the substance resulting from the reaction of the specific pair from the two lists can be regarded as new. However, the Board found that the case at hand was different in that it only required selection of a single starting material from one list. The fact that also a hydrogenation process had to be selected from five alternative processes disclosed, in order to arrive at the claimed compound, was considered not to be comparable with the selection of a second starting material (point 14.3 of the reasons).

Hence, the claimed compound was regarded disclosed in the prior art document by disclosure of the specific starting material and the specific process yielding that compound, and the claims therefore lacked novelty.

The appeal was hence dismissed.

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Headnote:

1. In the case of one of a number of chemical substances described by its structural formula in a prior publication, that substance's particular stereospecific configuration (threo form) - though not explicitly mentioned - is anticipated if it proves to be the inevitable but undetected result of one of a number of processes adequately described in the prior publication by indication of the starting compound and the process. In such cases, novelty by selection cannot be claimed, since none of the possible combinations of all the listed starting compounds and process variants introduce a new element - indispensable for substance selection - that would result in a true and not just "identical" modification of the starting substances.

2. [...]

The full text of the decision can be accessed here.

Quotes from (10 random) decisions citing T 12/81 can be found here.

T 0056/87 - Technical teaching of a document must be interpreted as a whole - #47

Citation rank: 47
No. of citations: 95

The invention in the underlying opposition case related to a method of controlling a divergent beam of rays, in which method two sets of flat electrodes were placed at certain locations relative to the beam. One set of electrodes was placed in the centre of the beam (such that the entire electrode surface is hit my the beam), the other set of electrodes was placed such that a part of the electrode surface is hit by the beam, another part of the beam being "in the shadow of the collimator".

The opponent alleged lack of novelty over D1, which also disclosed a method of controlling a divergent beam of rays with two sets of flat electrodes. Figure 1 of D1 was a schematic drawing of an apparatus for carrying out the method of D1. It was almost identical to a Figure in the patent in dispute. The schematic drawing in D1 was such that the features, according to which one set of electrodes is fully hit by the beam and the other set of electrodes is only partially hit, could be said to be deducible from the drawings. The Opposition Division had revoked the patent on the basis of what was shown in Figure 1 of D1.

The Technical Board of Appeals took a different standpoint. They conceded that the relevant features indeed appeared to be deducible from Figure 1 of D1, however, only if it had stood on its own. When the description of the invention of D1 was properly taken into account, it was apparent that the second set of electrodes could not have been arranged such that they are partially hit by the beam of rays. Instead, it was deducible from the description of D1 that these second electrodes must be entirely within the radiation field of the beam to fulfil their function according to D1.

The Board stated:

"It is generally accepted that for deciding on the novelty of a feature claimed in a patent or in a patent application it is necessary to determine whether this feature may be derived directly and unmistakenly from a prior art document by a person skilled in the art (see point 4 of decision T 204/83 already mentioned). In the Board's opinion, the skilled person who studies a document does not consider individually the various single items described therein but looks at their technical interrelation in order to try to understand the functioning of the disclosed apparatus or process. The skilled person is thus used to seeing all the detailed information contained in a document in their technical context. Therefore, the technical disclosure in a prior art document should be considered in its entirety, as it would be done by a person skilled in the art. It is not justified arbitrarily to isolate parts of such document from their context in order to derive therefrom a technical information, which would be distinct from or even in contradiction with the integral teaching of the document." (point 3.1 of the reasons)

The Board concluded that Figure 1 of the D1 should not be interpreted in isolation from the remainder of the document, and - in view of the express teaching of the description - the skilled person would interpret D1 such that the second set of electrodes is not partially, but fully, hit by the beam of rays.

For this reason, D1 was considered not novelty destroying for the claimed invention.

The opposition was rejected.

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Headnote:

The technical teaching in a prior art document should be considered in its entirety, as it would be done by a person skilled in the art. It is not justified to arbitrarily isolate parts of such document from their context in order to derive therefrom a technical information, which would be distinct from or even in contradiction with the integral teaching of the document. Thus, a technical feature which is derived from or based on dimensions obtained from a diagrammatic representation and which technically contradicts the teaching of the description, does not form part of the disclosure of this document.

The text of the decision can be found here.

G 0006/88 - Plant growth regulating agent / Second non-medical indication - #48

Citation rank: 48
No. of citations: 95

G 6/88 ("Plant growth regulating agent") is one of two related landmark decisions, which looked at the question to which extent an intended purpose stated in a "use claim" must be considered a limiting technical feature of that claim. This is clearly an important legal question. The present decision's twin (G 2/88, "Friction reducing additive") ranks 3rd(!) in the list of the EPO's most-cited Boards of Appeals decisions of all times.

In the underlying appeal case, claim 1 was directed to the "use of pyrimidine butanol derivatives of the formula X to regulate plant growth." The prior art (D1) disclosed the use pyrimidine butanol derivatives of formula X to control fungi on plants. Both effects (i.e., regulation of plant growth and control of fungi) occurred concurrently, whenever X was applied to plants. However, the plant-growth-regulating effect previously was previously unnoticed. The question then arose whether under such circumstances the stated purpose of claim 1 (regulate plant growth) could establish novelty over the known use of the same compound, despite the fact that the now claimed effect (regulation of plant growth) had in fact previously occurred when the pyrimidine butanol derivatives of formula X were used to control fungi on plants according to D1. In other words, the "technical means" to achieve the two technical effects (regulation of plant growth and fungi control) were the same.

The Board in the underlying appeal case therefore referred the following question of law to the Enlarged Board of Appeal:

"Is a claim to the use of a chemical compound or class of compounds for a particular non-medical purpose novel within the meaning of Article 54 EPC, having regard to prior art which discloses the use of that compound (class of compounds) for a different non-medical purpose, if the two teachings are carried out by identical technical means and the only novel feature in the claim is the use itself?"

The Enlarged Board approached the question in a general manner by investigating how patent claims were traditionally interpreted in the contracting states to the EPC. They observed that different "schools" seemed to exist. In some contries (in particular Germany) the patent claims were broadly interpreted and the protection conferred by it depended more upon what was perceived to be the inventor's contribution to the art, rather than strictly following the wording of the claims. In other countries, in particular in the United Kingdom, the exact wording of the claims was regarded crucial to determine the scope of protection. The EPC sought to minimise the effect of the different traditional approaches to claim interpretation by Art. 69(1) and the corresponding "Protocol on the Interpretation of Article 69 EPC". The Protocol essentially states that the proper way of interpreting claims under the EPC lies between the extremes traditionally practised in Germany and the UK.

With respect to use claims (e.g., of the form:"use of a compound X for a particular purpose"), the Enlarged Board stated that: 

"The recognition or discovery of a previously unknown property of a known compound, such property providing a new technical effect, can clearly involve a valuable and inventive contribution to the art." 

Hence, they were of the opinion that the possibility of protecting inventions covered by use claims was generally regarded desirable.

The Enlarged Board also noted that the issue of "use claims" had already been dealt with in G 1/83 - G 7/83. These decisions were all concerned with the patentability of a further medical use of a compound where a first medical use is already known. The Enlarged Board in G 6/88 pointed out that G 1/83 - G 7/83 had to deal with an additional complication, namely the exclusion of therapeutic methods from patentability. However, the Enlarged Board endorsed the general view taken in G 5/83 that a second non-medical new and non-obvious use of a product is clearly patentable (G 6/88, point 4 of the reasons).

Regarding the interpretation of use claims, the Enlarged Board stated:

"In relation to a claim whose wording clearly defines a new use of a known compound, depending upon its particular wording in the context of the remainder of the patent, the proper interpretation of the claim will normally be such that the attaining of a new technical effect which underlies the new use is a technical feature of the claimed invention." (point 7 of the reasons)

This would be the correct way of interpreting use claims, taking Art. 69(1) EPC and the Protocol on its interpretation into account. Since use claims are to be interpreted such that the desired technical effect is a functional feature of the claim, the stated technical effect can establish novelty over prior art, which does not mention that particular technical effect. An effect which was not noticed or described in a prior art document cannot be regarded as having been "made availlable" by publication of such a document in the sense of Art. 54(2) EPC.

The Enlarged Board also commented on difficulties in infringement proceedings arising from the fact that a potential infringer practising a known use of a compound (e.g., use of compound X to control fungi on plants) could be found infringing a later patent directed to the use of that compound to regulate plant growth. The Enlarged Board, however, found that this could be solved by so-called "vested rights", based on the prior use by the potential infringer. In any event the same problems resulted from allowing patenting the second medical use G 1/83 - G 7/83.

In summary, G 6/88 found that a claim to the use of a compound for a particular purpose, where the purpose relies on a technical effect described in the patent, includes that technical effect as a limiting functional feature. The claim is thus new over prior art disclosing other uses of the same compound, even if the technical means for carrying out the use are identical, as long as the particular technical effect underlying the invention is not disclosed in the prior art.

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Headword:

A claim to the use of a known compound for a particular purpose, which is based on a technical effect which is described in the patent, should be interpreted as including that technical effect as a functional technical feature, and is accordingly not open to objection under Article 54(1) EPC provided that such technical feature has not previously been made available to the public.

The full text of the decision can be found here.

T 0279/89 - Novelty of selection inventions - #61

Citation rank: 61
No. of citations: 79

T 279/89 is one of two decisions, which are frequently cited as having defined the criteria under which novelty of (numerical) selection inventions are to be assessed. It was, however, the other decision (T 198/84) which has defined the criteria. T 279/89 merely cited the criteria developed by T 198/84 and applied them to their case.

In the underlying examination case of T 279/89, the examination division rejected the application for lack of novelty. The invention related to a method of injection molding of an elastomer, wherein one component of the elastomer was defined as containing "more than 10% of the 2,4'-isomer". The invention was considered by the examining division to lack novelty over two prior art documents, which disclosed similar methods using up to 50% of the 2,4'-isomer, and 20 to 95% of the 2,4'-isomer, respectively.

The applicant filed an appeal based on three requests ("A", "B", "C"), in which the amount of the 2,4'-isomer was:

- request A: greater than 10%,
- request B: greater than 10%, less than 20%,
- request C: greater than 10% and up to 15%.

The Appeal Board found and introduced a document D4 disclosing 0.5 to 25% of the 2,4'-isomer. The The applicant/appellant argued that the feature defining the relative amount of the 2,4'-isomer would establish novelty over the prior art in each case, in particular, over D4.

The Board referred to T 198/84 and applied the criteria developed therein for assessing novelty of sub-ranges over the disclosure of a broader numerical range. These were:

A sub-range of numerical values can be regarded novel over the disclosure of a broader range, when each of the following criteria is satisfied:

1. the selected sub-range should be narrow;
2. the selected sub-range should be sufficiently far removed from the known range illustrated by means of examples;
3. the selected area should not provide an arbitrary specimen from the prior art, i.e. not a mere embodiment of the prior description, but another invention (purposive selection).

Applying these criteria, the Board in T 279/89 found that none of requests "A", "B" and "C" was novel over D4. Non-novelty of request "A" was out of the question. Regarding requests "B" and "C", the Board stated:

4.1.1. The present ranges of 10 to 20% and 10 to 15% in Claim 1 according to requests B and C cannot be regarded as narrow selections, since they correspond to approximately 40 to 80% and respectively 40 to 60% of the range known from the prior art. Moreover, the ranges newly defined are not near the lower or upper end of that known range, but right in the middle thereof. For this reason alone, novelty of the ranges in question cannot be acknowledged.

In addition, it was concluded by the Board that the parameter range chosen in requests "B" and "C" was not a purposive selection, as required by criterion 3, above.

As a consequence, the appeal was dismissed.

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Headnote:

none

The full text of the decision can be found here.

T 0206/83 - Prior art disclosure must be enabled - #87

Rank: 87
No. of citatons: 59

In the case underlying T 206/83, the examining division found that claim 1 lacked novelty over an earlier patent application from the same applicant (Art. 54(3)).

The Board observed that it was no question that certain compounds individually disclosed in the earlier application fell under claim 1 of the patent in dispute. The Board stated that there was no dispute either that a compound disclosed in terms of its chemical structure can only be regarded as being "made available to the public" in the sense of Art. 54(2) EPC, if a reproducible method is described in the same document, or otherwise available to the skilled person through its common general knowledge. The prior art must include an enabling disclosure in the sense that the skilled person must be able to make the potentially novelty-desctroying compounds.

The earlier patent application, which disclosed compounds falling under claim 1, also included a method of making those prior art compounds from certain starting materials. It was however not described how the starting materials were made. The Board then went on to investigate whether the skilled person would nevertheless be able to make the starting materials using common general knowledge. The same standards were applied as for the assessment of sufficiency of disclosure (Art. 83 EPC). The Board concluded in the end that more than common general knowledge was needed to make the starting materials, and thus also the claimed compounds which represented the potentially novelty-destroying disclosure. Consequently, disclosure of those compounds without disclosing a method of making them did not destroy novelty of claim 1.

T 206/83 is therefore most often cited for its statement that for the disclosure of a prior art document to be novelty-destroying, the disclosure of that prior art document must be enabled.

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Headnote:

A document (in this case a co-pending European application) does not effectively disclose a chemical compound, even though it states the structure and the steps by which it is produced, if the skilled person is unable to find out from the document or from common general knowledge how to obtain the required starting materials or intermediates. Information which can only be obtained after a comprehensive search is not to be regarded as part of common general knowledge.

 The decision text can be accessed here.

T 0296/87 - Enantiomers - #99

Rank: 99
Number of citations: 55

This decision, ranking #99 on the list of the EPO's most-cited Board of Appeal decisions  deals, i.a., with the question whether an opponent, who filed restricted claims in the course of opposition proceedings, can subsequently file claims broader than the previous ones (but still within the limits of Art. 123(3), of course).

The decision also deals with the question of novelty of specific configurations of chemical compounds (e.g. enantiomers) over a more general disclosure of the chemical structure (e.g., racemates).

1. Broadening of claims during opposition

Regarding the issue of broadening the scope of the claims relative to a version of the claims previously filed in opposition, the Board in T 296/87 held:

"2.2 Moreover a Board of Appeal had already decided (T 123/85 of 23 February 1988, OJ EPO 1989, 336) that the EPC made no provision for a patentee to surrender his patent in opposition proceedings, which meant that (even had there been an express declaration of surrender, which was not the case) he could not surrender his patent either wholly or in part. He could only request that it be amended and, in principle, could withdraw or amend such a request at any time provided no abuse of procedural law was involved (cf. points 3.1.1 and 3.1.2 of the decision cited). In the present case there is nothing to indicate any such abuse; in fact the complexity of the subject-matter makes it understandable that the appellants should have been most unsure as to what form of limitation the EPO would accept for establishing novelty."

A later decision, T 368/98, uses these principles in the context of a broadening of claims relative to claims refused by the opposition division and cites T 296/87 as follows:

"2.3. Even if the amended claim were to be seen as broader than the claim refused by the opposition division, the board finds the amendment admissible under the case law, which allows broadening on appeal, unless it would constitute abuse of proceedings (see eg. decisions T 89/85 of 7 December 1987 and T 296/87, OJ EPO 1990, 195)."

In other words, by filing restricted claims in opposition division, the patentee does not surrender the scope no longer claimed by the restricted claims. He can re-claim that subject matter later, in a further attempt to formulate allowable claims (within the limits of Art. 123(3), of course)

 

2. Novelty of specific configurations of chemical compounds

The Board also had to decide on the issue of when a chemical substance is disclosed by the prior art. The Board referred to T 181/82 ("Spiro compounds"), where it was held that the disclosure "C1-C4 alkyl" does not individually disclose all members (including isomers, namely: methyl (C1), ethyl (C2), n- and iso- propyl (each C3), and n-, sec.-, iso- and tert.-butyl (each C4)).

By analogy, the Board found that disclosure of racemates in the prior art did not take away novelty of the claims, which related to specific enantiomers contained in those racemates:

6.2 The Board believes this principle applies in the present case to the extent that, judging by expert interpretations of the structural formulae and scientific designations to be found in the prior art, the latter describes only racemates. Given the asymmetrical carbon atom in the formula, the substances in question can indeed occur in many conceivable configurations (D- and L-enantiomers); that alone does not mean, however, that these configurations are disclosed in individualised form. The novelty of the D- and L-enantiomers is therefore not destroyed by the description of the racemates.

Novelty of the claimed enantiomers was therefore not destroyed in the specific case.

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Headnote:

A chemical substance is held to be new if it differs from a known substance in a reliable parameter. The configuration is such a parameter. If the prior art describes specific racemates in more detail by reference to their structural formulae, that alone does not disclose their specific configurations (here D- enantiomers); see points 6 and 7 of the Reasons (in conjunction with T 12/81 "Diastereomers", T 181/82 "Spiro compounds" and T 7/86 "Xanthines" in OJ EPO 1982, 296; 1984, 401; and 1988, 381 respectively).

The complete text of the decision can be accessed here.