Recent chemical EPO decisions: Part 1

RSC Case Law Seminar

Jo AddisonJo dd soHaseltine Lake LLPjaddison@haseltinelake.comj @

OverviewOverview

• A brief look at EPO decisions– T 1673/11 (Art. 123(3) EPC)

T 1841/11 (Art 56 EPC)– T 1841/11 (Art. 56 EPC)– T 2306/12 (Art. 83 EPC)– T 1840/11 (Art. 123(2) EPC)– T 475/12 (Art. 53(c) and 84 EPC)( ( ) )

T 1673/11T 1673/11

T 1673/11T 1673/11

Cl i 1 t dClaim 1 as granted:The use of human acid glucosidase in the manufacture of a medicament for the treatment of infantile Pompe's disease wherein the human acidfor the treatment of infantile Pompe s disease, wherein the human acid alpha glucosidase is in the 100 to 110 kD form, wherein the medicament is to be administered intravenously, and wherein the treatment is to be continued for at least 4 weekscontinued for at least 4 weeks.

Claim 1 of the main request held allowable by OD:Human acid alpha glucosidase in the 100 to 110 kD form, for use in the treatment of infantile Pompe's disease wherein the human acid alphatreatment of infantile Pompe s disease, wherein the human acid alpha glucosidase is to be administered intravenously, and wherein the treatment is to be continued for at least 4 weeks.

T 1673/11T 1673/11

• G 2/88Clear distinction between what is meant by– Clear distinction between what is meant by “protection” and “rights conferred”

– “Protection” determined by the scope of the claims under Art. 69(1) EPC, particularly the categories of u de t 69( ) C, pa t cu a y t e catego es othe claims and their technical features

– “Rights conferred” (Art. 64(1) EPC) relate to how such subject-matter is protected and are a matter solely for the designated Contracting States

T 1673/11T 1673/11

• “It is generally accepted as a principle underlying the EPC that a claim to a particular physical activity (e.g. method, process, use) confers less protection than a claim to the physical entity per se. As a consequence, a purpose limited process claim confers lessa purpose-limited process claim confers less protection than a purpose-limited product claim”

– See also, T 1780/12, T 879/12 and T 250/05

T 1673/11T 1673/11

• The Swiss type claim as granted has a narrower scope than the purpose-limited product claimp p p p

• Changing categories violates Art. 123(3) EPCChanging categories violates Art. 123(3) EPC

• Alpha glucosidase products provided withAlpha glucosidase products provided with instructions for use in the treatment of diseases other than Pompe’s disease considered to fall under the scope of the purpose-limited product claim

T 1841/11T 1841/11

T 1841/11T 1841/11

• The claimed invention relates to a method of manufacturing a semiconductor substrate with a SiGe film

• D2 describes a method of fabricating a low defect Ge film on a substrate

• Other prior art documents were available explicitly disclosing methods for producing substrates comprising SiG lSiGe layers

T 1841/11T 1841/11

“The closest prior art should relate to the same or at least a similar purpose (or objective) as the claimed invention. Even if prior art relating to the same purpose is available, it is not excluded that a document relating to a similar purpose might be considered to representto a similar purpose might be considered to represent a better - or at least an equally plausible - choice of closest prior art, provided that it would be immediatelyclosest prior art, provided that it would be immediately apparent to the skilled person that what is disclosed in the document could be adapted to the purpose of the claimed invention in a straightforward manner, using no more than common general knowledge.”

T 1841/11T 1841/11

• D2 describes a method of manufacturing a substrate comprising a Ge film formed by a CVD process

• The skilled person understands that this process would be carried out using only a Ge forming precursor

• It would be immediately apparent to the skilled person that by supplying both Si and Ge precursor gases in th CVD th lt ld b SiG filthe CVD process, the result would be a SiGe film rather than a pure Ge film

T 1841/11T 1841/11

• “This difference [i.e. the difference stemming from the different purpose] is not one which can legitimately be invoked in support of inventive step.”

• “The problem-solution approach presupposes that the skilled person has a purpose in mind from the very b i i f th i ti hi h i thibeginning of the inventive process, which in this case is the manufacture of a known type of semiconductor substrate comprising a silicon-germanium film Withinsubstrate comprising a silicon germanium film. Within this conceptual framework, it cannot be logically argued that the skilled person would find no motivation to incorporate silicon-germanium.”

T 2306/12T 2306/12

T 2306/12T 2306/12

• Claim 1 amended during opposition proceedings to include “the size of the active ingredient particles is lessinclude the size of the active ingredient particles is less than 10% of the particle size of the inclusion bodies”

• This feature was taken from one of the dependent claims

• No description of how particle size is to be measured

• Opponent argued that the patent lacks sufficiency

T 2306/12T 2306/12

• Particle size limitation is an issue of clarity rather than ffi isufficiency.

A hi f i l d d i h d l i A• As this feature was included in the granted claims, Art. 84 EPC not considered.

• See also T 2182/11

• Arguing insufficiency without experimental data can be difficult!difficult!

T 1840/11T 1840/11

T 1840/11T 1840/11

• Claim 1 of the Main Request included additional features d t l i 1 t d th dditi l f tcompared to claim 1 as granted, the additional features

were referred to in a description of a preferred embodiment

• Referring to T 962/98 and T 879/09, the patentee argued that the incorporation of a feature from one embodimentthat the incorporation of a feature from one embodiment into the claim was an allowable intermediate generalisation

T 1840/11T 1840/11

• T 962/98 – An intermediate generalisation is only admissible ifAn intermediate generalisation is only admissible if

the skilled person can recognise without any doubt from the application as filed that those characteristics are not closely related to the other characteristics of the working example and apply directly and unambiguously to the more general contextunambiguously to the more general context

T 1840/11T 1840/11

• T 331/87 – “essentially test”An amendment that removes a feature from a claimAn amendment that removes a feature from a claim is allowable if the following criteria are met: a) the feature is not presented as essential in thea) the feature is not presented as essential in the

disclosure, b) the feature is not indispensable for the function b) t e eatu e s ot d spe sab e o t e u ct o

of the invention in the light of the technical problem it serves to solve, and

c) the removal requires no real modification of other features to compensate for the change.

T 1840/11T 1840/11

• Only two preferred embodiments described

• Embodiments identical in terms of shape and configuration of recesses and capillaries

• Skilled person provided with no indication that would p pallow him to conclude unambiguously that, for example, alternative designs for the recesses or capillaries could b dbe used

T 475/12T 475/12

T 475/12T 475/12

• Claim 1 of the Main Request:A method for an in vivo examination, the method comprising: , p gsubstantially emptying a subject’s colon from content by administering a laxative to the subject;subsequent to said emptying, the subject swallowing a swallowable in-vivo imaging device; subsequent to said swallowing, the subject taking a booster laxative; and receiving images transmitted from said imaging device.

T 475/12T 475/12

• The administration of laxatives has a cleansing effect, which may be non-therapeutic or provide certain therapeutic effects depending on the health state of the subject to which they are administered.

• The Board did not consider it possible as a matter of law to draw a distinction between applying these method steps to a possibly healthy subject as opposed to asteps to a possibly healthy subject as opposed to a patient suffering from a disorder that is treatable using these substances.

• The method was found to be non-patentable under Article 53(c) EPC.

T 475/12T 475/12

• Claim 1 of the amended Main Request:A non-therapeutic method for an in vivo examination, the p ,method comprising: substantially emptying a subject’s colon from content by administering a laxative to the subject;subsequent to said emptying, the subject swallowing a swallowable in-vivo imaging device; subsequent to said swallowing, the subject taking a booster l ti dlaxative; and receiving images transmitted from said imaging device.

T 475/12T 475/12

• G 1/03– an undisclosed disclaimer may be allowablean undisclosed disclaimer may be allowable

to disclaim subject-matter excepted from patentability under Article 53(c) EPC

– a claim containing a disclaimer must meet the requirement of clarity of Article 84 EPC.

• “Non-therapeutic” contradicts the inherentNon therapeutic contradicts the inherent therapeutic character of the claimed steps

Thank youy

Any questions?Any questions?

jaddison@haseltinelake.com