UK: CIPA EPO Report November 2007

Last Updated: 13 December 2007
Article by Andrew Bowler and Siân Watson



Technical Board of Appeal (TBA) Decisions are available on the EPO website at and similarly decisions of the Enlarged Board of Appeal (EBA) can be downloaded from A list of the matters pending before the Enlarged Board is included at

Recent notices and press releases of the EPO are published at and respectively, and recent issues of the Official Journal can be downloaded from

(Article 83 EPC)


T 0954/05: Composition topique contenant un antagoniste de substance P / L’Oreal

TBA Decision of 3 May 2007

Chairman: U Oswald

Members: H Kellner and J-P Seitz

This is a TBA decision allowing an appeal against the Opposition Division’s decision to uphold a patent (EP 0 722 736) in an amended form.

The Opponents opposed the patent on the basis of Article 100(a) and Article 100(b) EPC. An EP application which had been designated in some, but not all, of the relevant contracting states was cited as a "novelty-only" citation under Article 54(3) EPC.

The Opposition Division had concluded that the two sets of claims were valid; the first set for the contracting states designated for the prior art EP application, and the second set for the remaining contracting states. The TBA described these claim sets as relating to a therapeutic composition…characterised in that the composition contained at least a compound having two characteristics, namely: (a) being an antagonist of substance P; and (b) being chosen from compounds containing at least one heterocyclic group. The TBA described these characteristics in turn as a functional characteristic and a characteristic containing a structural element.

The Opponents’ appeal was based, inter alia, on an allegation that the patent was insufficient. The TBA agreed, holding that the second characteristic covered an indeterminate number of compounds far more reaching than the number of compounds disclosed in the patent. Further, the functional characteristic (a) was not identifiable in the indefinite list of candidate compounds due to the lack of teaching of a systematic selection process for determining its presence or absence. Three tests had been proposed in the patent. However, the TBA noted that there was no data/information pertaining to how to carry out these tests and measure the results. Moreover, no standard test was disclosed by which the skilled person could distinguish precisely between a compound consisting of an antagonist of substance P and a different compound.

Accordingly, the patent was held to be insufficient.

Added Matter
(Article 123(2) EPC)


T 0097/05 Polyionic transition metal catalyst composition / ExxonMobil Chemical Patents, Inc.

TBA decision of 31 May 2007

Chairman: R. Young

Members: M. Gordon and E. Dufrasne

In this decision the TBA considered the issue of added subject-matter under Article 123(2) EPC.

Independent claim 1 of the granted patent EP 0 614 468 (and of the application, as filed) described a feature of the invention as being "chemically bonded". In the course of the opposition proceedings, the patentee sought to amend the patent by, inter alia, replacing this term with "covalently bonded". The Opposition Division held that use of the new term made the claimed subject-matter unclear and therefore did not satisfy Article 84 EPC. The patentee appealed this decision, maintaining usage of the term "covalent" in its main and first auxiliary requests, but also submitting further auxiliary requests which reinstated the original term, "chemically bonded". The opponent maintained objections pursuant to Articles 84 and 123(2) EPC in respect of the term "covalent".

The TBA considered whether use of "covalent" in the claims resulted in a shift in the way in which the description and examples would be interpreted such that the amendment was inadmissible pursuant to Article 123(2) EPC. The TBA considered decision T 1239/03 and noted that it is necessary to consider whether the overall change in the content of the patent caused by the proposed amendment results in the skilled person being presented with information which is not clearly and unambiguously presented in the application as filed even when account is taken of matter which is implicit to the person skilled in the art. The TBA held that the description and examples of the patent did not lead the skilled person to understand that the bonds were specifically "covalent" (i.e. a particular species of chemical bond) and therefore this ‘narrowing’ amendment corresponded to an impermissible extension of subject-matter.

Neither the opponent nor the TBA objected to the appellant’s further auxiliary requests, which reinstated the original term "chemical", and the case was remitted to the Opposition Division for further prosecution.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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