Many of us find January to be a depressing month: the post-holiday blues, the short days, the cold/stormy weather (not to mention “Dry January”… brrr!). So, to brighten everyone's month, here's our round-up of recent European Patent Office case law! Happy New Year!
Adaption of the description in line with the claims
The debate continues with decision T 0438/22, this being the latest case concerned with the (some would say) peculiar requirement of the EPO for applicants to either delete from the description subject matter not covered by the claims, or explicitly state in the description that such subject matter is not part of the invention (EPO Guidelines for Examination F-IV, 4.3). This particular case is concerned with so-called “claim-like clauses” in the description, i.e. clauses corresponding to the original (parent) claims which are often included in the description when filing a divisional application, for use as basis for future claim amendments. According to the Guidelines, claim-like clauses must be deleted or amended prior to grant so as not to prejudice claim clarity (F-IV, 4.4).
T 0438/22 concerned Intel's European patent application EP3511980 which was refused by the Examining Division due to an alleged lack of clarity of the claims under Article 84 EPC due to the presence in the description of claim-like clauses. Intel argued that there is no legal justification to require the deletion of subject matter from the description simply because the Examining Division identifies it as “claim-like clauses”, and…the Board of Appeal agreed. Thus, the Board found that “claim-like clauses” could not be misinterpreted as claims, and that there is no justification for deleting them simply because they were drafted as “claim-like clauses”. However, on the general principle of adaptation of the description, the Board of Appeal considered there to be "long established" case law that Article 84 EPC requires the description to be consistent with the allowed claims.
A referral to the Enlarged Board of Appeal on this issue is looking increasingly likely, following the invitation in case T 56/21 from the Board of Appeal for the applicant to request a referral, and the applicant doing so. We await the Board of Appeal's response with interest.
Standard of proof for a therapeutic effect for medicinal products
Board of Appeal case T 2036/21 considered the standard of proof required for a therapeutic effect for a medicinal product. EP2170104 claimed a composition for preventing or delaying the onset of dementia in a prodromal patient, and the crux of the case was whether further evidence was available which made it credible that the claimed compositions achieved this result.
The Board confirmed that EPO proceedings applied the principle of “free evaluation of evidence”. Thus, the EPO determines facts on the basis of the available evidence on the footing that one set of facts was more likely to be true than the other. It was not necessary to perform a statistical analysis of test results to determine a specific confidence interval as would be required in other areas of biomedical research and by health authorities granting marketing authorisations for medicinal products. On this basis, the Board concluded that the results in the prior art documents did make it credible that the claimed composition prevents or delays the onset of dementia in a prodromal patient.
Patentability of sub-ranges
Historically, three criteria needed to be met for a sub-range selection invention to be considered novel: the sub-range must be narrow compared to the broader prior art range, it must be far removed from any specific example of the prior art document (including end points of ranges), and must represent a “purposive selection” from the broader range, supported by a technical effect. In the present case, the Opponent submitted that the insulin concentration in the claim represented an arbitrary selection of a sub-range, and therefore could not confer novelty.
The Board of Appeal disagreed with the Opponent, and noted that the "purposive selection" criteria has been increasingly dismissed over recent years as a proper requirement for an assessment for the novelty of sub-ranges , and is now considered as an assessment more proper to inventive step. The novelty attack based on the lack of a purposive selection was thus dismissed. The claimed invention was found inventive based on the unexpected technical effects of the selected concentration.