“Tools and Pitfalls” – Recent Decisions from
the EPO Boards of Appeal
20 November 2014
Presented by:
Leythem A. Wall
Overview
• Acceleration of Appeal Proceedings
• Double Patenting
• Admissibility of Appeals
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• Added Matter
• Sufficiency
• Inventive Step
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• AOB
Advantage Belgium - T0895/13, T1125/13 (3.3.04)
• OJ EPO 1/2014, 63 – appeal might be accelerated “where
infringement proceedings have been brought or are envisaged”
• Opponent based in Belgium
• Belgian courts take prima facie validity approach, even if
appealed patent was revoked in EPO opposition
• Appellant (patent proprietor) previously applied for Belgian
preliminary injunction in another case
• Based on Belgian court practice + history of appellant, EPO
appeal proceedings accelerated
• The BoA states this is not a precedent, but relies on these
particular facts
Triple Patenting
No express provision in EPC precluding double patenting
Guidelines G-IV, 5.4 for double patenting refusal
Guidelines C-IX, 1.6 – parent and divisional applications may
not claim the same subject matter… The difference between
the claimed subject matter must be clearly distinguishable
T1780/12 (3.3.04) & T1570/09 (3.3.02) & T0879/12 (3.3.08)
• 2nd medical use claims (product) and Swiss claims (process)
are not same subject matter - not double patenting
T1766/13 & T1765/13 (3.3.05)
• product, use of product and method of fabricating are
not same subject matter - not double patenting
Admit It - T2532/11 (3.3.05)
• Patent revoked in EPO Opposition. All appeal requests
different (further limited) and obviate OD Decision
• No reference to impugned decision + explanation as to
why this decision should be wrong and set aside
• Question of whether newly filed requests can be seen as
implicit grounds of appeal i.e. is there a link between the
decision and grounds? Yes, but is it sufficiently linked? No,
needs to be a contestation of the Decision
• The amendments in order to remove the grounds of the
decision under appeal constitute an implicit acceptance
of the decision and therefore cannot be regarded as
grounds for appeal under Art.108 EPC
• Appeal rejected as inadmissible
Admit It - T0935/12 (3.3.03)
• Patent revoked in EPO opposition for insufficiency with respect to
features originally in granted claim 7 but incorporated into claim 1
• All appeal requests deleted feature of granted claim 7 from claim
1 and had new limitations
• Opponent argued that grounds of appeal did not explain why
contested decision was wrong. Appellant should not be
allowed to put forward a “fresh case”
• BoA noted that requests ultimately pursued in opposition hearing
all included granted claim 7 feature. No indication why appeal
Requests without claim 7 were not maintained before the OD
• New features in Requests require new assessment
• Appeal requests inadmissible
Rearranged Matter - T0287/11 (3.3.10)
• Claim 1 as granted:
"An aerosol hair styling composition comprising:
(a) from 5% to 90% by weight of a water-soluble polyalkylene glycol that is substantially free
of polyalkylene glyceryl ethers, except if the composition comprises a silicone or silicone
derivative, and that has a number average molecular weight of from 190 to 1500 and from 5 to
35 repeating alkylene oxide radicals wherein each of the repeating alkylene oxide radicals has
from 2 to 6 carbon atoms, or triglycerin or PPG-4;
(b) from 1% to 90% by weight of a liquid carrier; and
(c) from 5% to 40% by weight of a propellant.“
• Claim 1 of Main Request limits water-soluble glycol to formula:
• Contravened Article 123(3) EPC, patent revoked
Rearranged Matter - T0287/11 (3.3.10)
• Main Request in appeal differs from granted claim 1 by:
“wherein the water-soluble polyalkylene glycol conforms to the formula:
wherein A is selected from the group consisting of methyl or hydrogen or mixture thereof and
wherein R is selected from the group consisting of H, methyl, and mixtures thereof, and
wherein n has an average value of from 5 to 35"
• Still contravenes Article 123(3) EPC
Rearranged Matter - T0287/11 (3.3.10)
• Auxiliary Request I in appeal differs from granted claim 1 by:
“wherein the water-soluble polyalkylene glycol conforms to the formula:
wherein A is selected from the group consisting of methyl or hydrogen or mixture thereof and
wherein R is selected from the group consisting of H, methyl, and mixtures thereof, and
wherein n has an average value of from 5 to 35"
• and:
"wherein the total amount of water-soluble polyalkylene glycol that is substantially free of
polyalkylene glyceryl ethers and that has a number average molecular weight of from 190 to
1500 and from 5 to 35 repeating alkylene oxide radicals wherein each of the repeating
alkylene oxide radicals has from 2 to 6 carbon atoms, or triglycerin or PPG-4
is in the range of 5% to 90% by weight“
• Article 123(3) EPC satisfied
Rearranged Matter - T0287/11 (3.3.10)
GRANTED CLAIM 1
MAIN REQUEST
1st AUXILIARY REQUEST
An aerosol hair styling composition comprising:
(a) from 5% to 90% by weight of a water-soluble
polyalkylene glycol that is substantially free of
polyalkylene glyceryl ethers, except if the composition
comprises a silicone or silicone derivative, and that
has a number average molecular weight of from 190
to 1500 and from 5 to 35 repeating alkylene oxide
radicals wherein each of the repeating alkylene oxide
radicals has from 2 to 6 carbon atoms, or triglycerin or
PPG-4;
(b) from 1% to 90% by weight of a liquid carrier; and
(c) from 5% to 40% by weight of a propellant.
An aerosol hair styling composition comprising:
(a) from 5% to 90% by weight of a water-soluble
polyalkylene glycol that is substantially free of
polyalkylene glyceryl ethers, except if the composition
comprises a silicone or silicone derivative, and that
has a number average molecular weight of from 190
to 1500 and from 5 to 35 repeating alkylene oxide
radicals wherein each of the repeating alkylene oxide
radicals has from 2 to 6 carbon atoms, or triglycerin or
PPG-4;
(b) from 1% to 90% by weight of a liquid carrier; and
(c) from 5% to 40% by weight of a propellant.
An aerosol hair styling composition comprising:
(a) from 5% to 90% by weight of a water-soluble
polyalkylene glycol that is substantially free of
polyalkylene glyceryl ethers, except if the composition
comprises a silicone or silicone derivative, and that
has a number average molecular weight of from 190
to 1500 and from 5 to 35 repeating alkylene oxide
radicals wherein each of the repeating alkylene oxide
radicals has from 2 to 6 carbon atoms, or triglycerin or
PPG-4;
(b) from 1% to 90% by weight of a liquid carrier; and
(c) from 5% to 40% by weight of a propellant.
wherein the water-soluble polyalkylene glycol
conforms to the formula:
wherein the water-soluble polyalkylene glycol
conforms to the formula:
wherein A is selected from the group consisting of
methyl or hydrogen or mixture thereof and wherein R
is selected from the group consisting of H, methyl, and
mixtures thereof, and wherein n has an average value
of from 5 to 35;
wherein A is selected from the group consisting of
methyl or hydrogen or mixture thereof and wherein R
is selected from the group consisting of H, methyl, and
mixtures thereof, and wherein n has an average value
of from 5 to 35;
wherein the total amount of water-soluble
polyalkylene glycol that is substantially free of
polyalkylene glyceryl ethers and that has a number
average molecular weight of from 190 to 1500 and
from 5 to 35 repeating alkylene oxide radicals wherein
each of the repeating alkylene oxide radicals has
from 2 to 6 carbon atoms, or triglycerin or PPG-4
is in the range of 5% to 90% by weight.
Setting An Example – T1616/09 (3.3.02)
Rule 42(1)(e) EPC – “the description shall describe in detail at least
one way of carrying out the invention claimed, using examples
where appropriate”
• Claims to pharmaceutical composition, 2nd medical use, kit
• No examples including results data. No evidence of improved or
synergistic effect. Refused because insufficient
• BoA disagreed, issue of inventive step not sufficiency
• For claims to pharmaceutical compositions or kits it is in principle
sufficient that the application provides information which allows
the skilled person to produce the composition or kit, and that
there are no substantiated doubts that it could be used in therapy
Setting an Example – T1616/09 (3.3.02)
• For second-medical-use claims it is required that the composition
itself is disclosed in an enabling way but also that its suitability for
the claimed treatment is plausibly disclosed in the application
• In the case of a claim directed to a pharmaceutical composition
comprising two classes of compounds which have both already
been used in therapy in the prior art, there is a priori no reason to
doubt that such a pharmaceutical composition can be produced;
no specific functional effect has to be demonstrated
• In the case of second-medical-use claims, if the claimed
therapeutic effect was already known to the skilled person at the
priority date, it is not necessary to demonstrate it in the
application
Inventive Polymorphs – T1422/12 (3.3.10)
• T0777/08 (3.3.01) concluded that crystalline version of
amorphous compound is not inventive in absence of an
unexpected technical effect. Improvements of crystalline vs
amorphous generally known ( - improved filterability and drying)
• Crystalline version of tigecycline antibiotic
• Closest prior art is amorphous tigecycline
• Objective technical problem is provision of more stable tigecycline
w.r.t. epimerisation resulting in improved biological activity
• prior art general teaches crystalline more stable than amorphous,
but concerns polymers and inorganic glasses
• prior art teaching not considered transferrable to tetracycline
antibiotics, let alone specific problem of epimerisation thereof
• Crystalline tigecycline is inventive
Extras
• T1142/12 (3.3.03) – refusal to change venue for Oral
Proceedings is not appealable or referable to Enlarged BoA
• T2317/13 (3.3.04) – grounds of appeal fax transmission
began 23:58 (final day) but completed 00:16. Full statement
admissible and no requirement for re-establishment of rights
• T0280/11 (3.2.01) – 685 Requests considered (454 filed 3
days before hearing, 3 during), but 686th Request too much!
QUESTIONS?
Thank you
Leythem Wall is a chartered UK patent attorney, a
European patent attorney and a European trademark and
design attorney. His practice involves patent drafting,
prosecution, opinions on infringement and validity, and
portfolio management. He has extensive experience in
Oppositions and Appeals including representation in Oral
Proceedings before the EPO.
Finnegan Europe LLP
16 Old Bailey
London EC4M 7EG
United Kingdom
Tel +44 (0)20 7864 2814
[email protected]
Disclaimer
These materials have been prepared solely for educational and
entertainment purposes to contribute to the understanding of U.S. and
European intellectual property law. These materials reflect only the
personal views of the authors and are not individualized legal advice. It is
understood that each case is fact specific, and that the appropriate solution
in any case will vary. Therefore, these materials may or may not be relevant
to any particular situation. Thus, the authors, Finnegan, Henderson,
Farabow, Garrett & Dunner, LLP (including Finnegan Europe LLP, and Fei
Han Foreign Legal Affairs Law Firm) cannot be bound either philosophically
or as representatives of their various present and future clients to the
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