Extrication from the Stranglehold of Art. 123(3) EPC - T1360/11

The decision T1360/11 relates to a captious problem in relation to Art. 123(3) EPC (extension of the scope of a granted claim).

Presume that a claim defines a composition as comprising substances of Group A in a total amount of 1 - 10%, wherein Group A includes the substances A1, A2 and A3. Limiting claim 1 to the substance A1, i.e. to a composition comprising substance A1 in an amount of 1 - 10% would not exclude the presence of A2 and A3 - even in amounts higher than 10%. A composition with 10% of A1, 10% of A2 and 10% of A3 would be covered by claim 1 as amended but not by claim 1 as granted and therefore contravene Art. 123(3) EPC. According to the technical board of appeal, "This gives rise to a situation in which a way out for the patentee is anything but easy." (Reasons 3.1)

The technical board of appeal proposes the following solution (cited from the headword):

Where a granted claim directed to a composition defined in an open manner and including the presence of a component belonging to a class or list of compounds in a quantity defined by a range is later amended by limiting the definition of the class or list of compounds, a possible infringement of the requirements of Article 123(3) EPC may be avoided by including in the amended claim a quantitative condition on the limited class or list of compounds and an additional constraint on the total amount of compounds belonging to the broader class or list (point 3.11).

Translated to example mentioned above the claim would read composition comprising substance A1 in an amount of 1 - 10% , wherein the total amount of substances of Group A is 1 - 10%.

Undermined by Hamsters - T 1846/10

The decision T 1846/10 of one of the EPOs technical boards of appeal relates to a method for cultivating live vaccines. The method includes cultivating attenuated L. intracellularis bacteria to obtain strains which are apathogenic, immunogenic and genetically stable.

Paragraph [0043] of the patent states that:

"Generally, an attenuated immunogenic L. intracellularis strain is produced after continuous culture for between at least about 150 and 250 days, during which time the culture is passaged at least about 7 to about 12 times."

Pursuant to the patent, serially passaged bacteria are tested in host animals for signs of attenuation. Tests were then carried out with various host animals including hamsters (example 5) and pigs (example 6) and it turned out that no immunogenic effect could be proven for hamsters (example 5).

The opponent used this as a basis for his argument that the disclosure of the patent did not enable the skilled person to carry out the invention without undue burden. The patentee responded as follows (cited from margin numbers 28 and 29 of the decision, epmphasis added):

The respondent submitted that for an objection of lack of sufficiency of disclosure to succeed there must be serious doubts, substantiated by verifiable facts, that the invention can in fact be carried out by the average person skilled in the art without undue experimentation or inventive skills (see decision T 19/90, reasons, point 3.3). Since the burden of proof lies with the appellant (the opponent), it was necessary to provide experimental evidence that the invention could not be carried. This had not been done.

In the board's judgement, verifiable facts are
(i) that example 5 of the patent was carried out in line with the general teaching of the patent,
(ii) that the percentage of animals which developed enteritis in example 5 was the same between the group vaccinated with the culture of a high passage strain of L. intracellularis and the non-vaccinated group, and
(iii) that the histological lesions were worse in the vaccinated group (the evidence supporting this fact being in paragraph [0103] and the table on page 17 of the patent).

Therefore, the board concludes that example 5 of the patent provides verifiable facts which raise serious doubts that the invention can in fact be carried out by the average person skilled in the art without undue experimentation or inventive skills by following the guidance provided in the patent. Under these circumstances, no additional experimental evidence from the appellant is required as it can rely on the evidence provided by the patent itself. The board concludes that the appellant has discharged its burden of proof.

As a note to retain for the practice: be careful mentioning embodiments for which the invention does not properly work. These might be used against the patent for an attack based on insufficiency of disclosure.

Precedent, the European Patent Office and a chance to discuss

"What is precedent and does the EPO have it?" is the title of a blogpost today by Darren Smyth on the IPKat weblog, here, with some input from fellow bloggers David Brophy and me. It raises questions relating to, among other things, the extent to which European Patent Office Board of Appeal and Enlarged Board of Appeal are governed, in theory and in reality, by the principle of being either bound or strongly influenced by their own decisions and those of other tribunals, as well as the extent to which national courts and patent-granting authorities are influenced or bound by them.

The IPKat's colleague Merpel concludes that:

" ... whether a decision is non-binding and non-influential, non-binding but influential, or binding, is a matter that has a substantial impact on players other than the relevant court or tribunal: it affects the decisions of parties whether to file, oppose, litigate and so on. It also affects the decisions of legislators as to whether a rule needs changing or not. If it is consistently applied with a consequence that is considered undesirable, legislative intervention is more likely than where bad decisions are distributed among good ones because the latter are not binding. Therefore, she points out, lack of consistent understanding and terminology between practitioners before the EPO is highly undesirable".

It would be good to hear from practitioners from outside the zone of Common Law countries as well as those who have grown up with the habit of precedent and who intuitively give advice on the assumption that it exists.

Salt, Pepper and Other Ingredients

Many of the cooking recipes in this blogger’s private collection end with „salt, pepper“ without indicating quantities. The skilled houseman or housewife will clearly be able to determine the quantities depending on his or her personal taste and would not contemplate adding ineffective amounts like 5 ppm.

 

This does, however, not apply to the famous person skilled in the art in its interpretation as applied by the EPO.

In the decision T 1009/12 discussed here and here, the claim at issue looked very much like a recipe for a composition, wherein the ingredient distinguishing the claim from the prior art was “an oxidant being selected from nitro aromatic compounds”.

The specification did neither mention any effects of this ingredient nor did the claim specify any minimum amount or maximum thereof to be used. The quantity was left completely open.

The BoA did not consider this feature for the assessment of inventive step:

 According to this open definition the presence of a very small amount of e.g. 5 ppm of said oxidant is sufficient to meet the condition of claim 1 of the first auxiliary request. However, the Board considers that such a low concentration will not cause any effect in view of the common general knowledge of a chemist and the intended purpose of an oxidant. Particularly in the light of the most general range of the oxidant of from 0.1-25 g/l (corresponding to 100-25000 ppm) disclosed in the present application […] it is not reasonable to expect any effect of the nitro aromatic compound in such a low concentration.

Therefore claim 1, which does not specify any concentration ranges of the four components at all, is considered to cover embodiments where the mere presence of the nitro aromatic oxidant compound will not produce any effect at all.

And further below:

Since process claim 1 includes silver plating compositions including unspecified, therefore also ineffective concentrations of the nitro aromatic oxidant (see points [2.3.3] and [2.4] above) this feature can only be considered as an arbitrary feature, because it is not credible that it contributes to the solution of the underlying technical problem. The Board therefore does not further consider it. (emphasis added)

The implication for the practice is that giving minimum (and maximum) values as well as the associated effects for any ingredient of a composition in the specification and claims as originally is highly recommendable. Failure to do so might result in the feature being completely disregarded in the assessment of inventive step.

The full text of the decision can be found here.