Some pitfalls of amending
composition claims at the EPO
Joe Lenthall, Ph.D.
RSC Law Group Seminar
28 November 2013
Overview
• Added subject-matter
• How not to do it - T2017/07
• How to do it - T0009/10
• Poisonous priority
• T1222/11
• Conclusion
Composition Claims
• E.g. A composition comprising:
- A;
- B; and
- C in an amount of 10 – 50 % by weight;
wherein C is selected from X, Y and Z.
T2017/07
T2017/07 - Claims
• Claim 1 as granted:
• “A hair dye composition comprising:
• (A) an acid dye and
• (B) alkylene carbonate having 3 – 5 atoms…, wherein the
content of the alkylene carbonate is 0.5 – 50 % by weight…”
T2017/07 - Claims
• Claim 1 as granted:
• “A hair dye composition comprising:
• (A) an acid dye and
• (B) alkylene carbonate having 3 – 5 atoms…, wherein the
content of the alkylene carbonate is 0.5 – 50 % by weight…”
• Claim 1 of Main Request:
• “A hair dye composition comprising:
• (A) an acid dye and
• (B) alkylene carbonate having 3 – 5 atoms…, wherein the
content of the alkylene carbonate is 0.5 – 50 % by weight, the
alkylene carbonate being propylene carbonate…”
Board of Appeal Decision
• BoA decided that the amendment extends the scope
of protection of claim 1 as granted under Art. 123(3)
EPC
Board of Appeal Decision
• BoA decided that the amendment extends the scope
of protection of claim 1 as granted under Art. 123(3)
EPC
• Article 123(3) EPC
• “The European patent may not be amended in such a way
as to extend the protection it confers.”
• This seems counter-intuitive because the
amendment narrowed the choice of alkylene
carbonate…
Scope of Claim 1 as Granted
• BoA stated that:
• “A composition which is specified in a claim to comprise a
component in an amount which is defined by a numerical
range is subject to an implicit proviso excluding the
presence of that component in an amount outside that
range.” [Emphasis added]
Scope of Claim 1 of Main Request
• BoA decided that:
• “An amendment restricting the breadth of that component,
for instance by narrowing down a generic class or a list of
chemical compounds, has the consequence of limiting the
scope of this proviso”
T1272/07 - Conclusion
• So, claim 1 of the main request no longer limits the
content of ethylene and/or butylene carbonate.
• Therefore, claim 1 of the main request extends the
scope of protection beyond that of claim 1 as
granted.
T1272/07 - Conclusion
• So, claim 1 of the main request no longer limits the
content of ethylene and/or butylene carbonate.
• Therefore, claim 1 of the main request extends the
scope of protection beyond that of claim 1 as
granted.
T0009/10
T0009/10 – Main Request
• 1. A skin cleansing composition comprising
• (A) …
• (B) 1 to 45 wt.% of a hydrophilic nonionic surfactant, having
an HLB value of more than 8 and having a hydrophobic
group with 8 or more carbon atoms,
• (C) 1 to 45 wt.% of a lipophilic amphiphile, selected from
nonionic surfactants having an HLB value of 8 or less, fatty
alcohols having 8 to 25 carbon atoms, fatty acids having 8
to 25 carbon atoms and monoalkylphosphoric acids having
8 to 25 carbon atoms…etc.
T0009/10 – Main Request
• Rejected under A.123(3)
EPC
• Same reasoning as
T2017/07
T0009/10 – Auxiliary Request
•
1. A skin cleansing composition comprising
•
•
•
•
(A) …
•
wherein the lipophilic amphiphile (C) is selected from nonionic
surfactants having an HLB value of 8 or less, fatty alcohols having
8 to 25 carbon atoms, fatty acids having 8 to 25 carbon atoms and
monoalkylphosphoric acids having 8 to 25 carbon atoms.
(B) 1 to 45 wt.% of a hydrophilic nonionic surfactant,
(C) 1 to 45 wt.% of a lipophilic amphiphile…
…wherein the hydrophilic nonionic surfactant (B) has an HLB
value of more than 8 and has a hydrophobic group with 8 or more
carbon atoms, and
T0009/10 – Auxiliary Request
• “[T]he Board takes the view that in the specific
case it is made clear that no hydrophilic nonionic
surfactant outside the 1 to 45 wt.% range is present”
T1222/11
POISONOUS
PRIORITY
T 1222/11
PCT filing
Egs 1-6
Publication
Egs 1-6
D4b
Applicant
PD1 filing
EP1 filing
EP1
•
•
•
D4b and PD1 (and EP1) all same applicant
Egs 1-6 inside claims of PD1 and EP1
Proprietor tried to disclaim (G1/03) Egs 1-6 in claim 1 of EP1 to
restore novelty
T 1222/11
PCT filing
Egs 1-6
Publication
Egs 1-6
D4b
Applicant
PD1 filing
54(3) -> 54(2)
EP1 filing
EP1
•
Able to split priority & entitlement dates for claims, for at least
subject matter of Egs 1-6
•
•
•
PD1 not 1st filing
so no priority for that part of claim in EP1 – Egs 1-6 54(2) art
Can’t disclaim Egs 1-6 as not 54(3) [unless disclaimer already
in application]
Poisonous Priority
• EPO discussed partial priorities on G2/98
• Refers to FCIPI memo in EPC 73 travaux preparatoires
• EPO strict approach in T1127/00 & T1877/08
• T1222/11 explicit mentions these cases and deliberately
takes a different approach
• UK strict approach in Nestec v. Dualit (Arnold J.)
Conclusions
• Need to take care when narrowing a component in a
composition claim
• T2107/07 and T0009/10
• See also T0172/07 & T0999/10
• Poisonous priority (& divisionals)
• Not a new problem, but a lot of recent discussion
• T1222/11 goes against previous decisions, so may well be
a referral to EBA
Conclusion
• T2017/07, T0009/10 and T1222/10 all same
proprietor
QUESTIONS?
Joe Lenthall, Ph.D.
[email protected]
Mewburn Ellis LLP
22-24 Queen Square
Bristol
Also in London, Cambridge and Manchester