UK: Report Of Recent EPO Decisions – July 2008

Last Updated: 27 August 2008
Article by Ewan Nettleton, Gregory Bacon and Claire Wilson



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


Added Matter (Articles 100(c) and 123 EPC)


T 0250/05: Systemic effects of nitric oxide inhalation / The Brigham and Women's Hospital, Inc.

TBA Decision of 4 March 2008

Chairman: U. Oswald

Members: M. Ortega Plaza and J-P. Seitz

This was an appeal by both parties following the Opposition Division's interlocutory decision to maintain the patent in issue in an amended form. The patent concerned the use of nitric oxide (NO) in the manufacture of a pharmaceutical for the systemic treatment of acute coronary syndromes via inhalation. The opponents' main contention was that the claims did not meet the requirements of Articles 123(2) or (3) EPC which they alleged were in irresolvable conflict with regard to the use of the phrases "the NO being effective via the systemic circulatory system" in both claims of the patent as granted and "systemic" in connection with the treatment of an acute coronary syndrome.

It was undisputed that the phrase "the NO being effective via the systemic circulatory system" in claim 1 as granted was neither explicitly nor implicitly disclosed in the application as filed. However, the TBA decided that claim 1 was formulated as a second medical use claim in the "Swiss form" and related to the treatment of a "medical condition". There was no disclosure in the application as filed for the treatment of a "medical condition" by means of "the NO being effective via the systemic circulatory system". In addition, neither the expression "systemic treatment" nor the administration route ("the inhalation route") delimited the indefinite expression "medical condition" in claim 1. The fact that the treatment was defined as "systemic treatment" served to differentiate it from an exclusively local treatment.

The TBA therefore concluded that the disputed phrase merely imposed on the subject-matter an additional condition which served to exclude the treatment of medical conditions in which the NO is effective exclusively via the pulmonary circulatory system. In its view, it imposed a technically meaningful limitation on the scope of the patent as granted and decision G 1/93 therefore applied. As such, the patent could not be maintained unamended and could only be maintained if there was a basis in the application as filed for replacing such subject-matter without violating Article 123(3) EPC.

During the oral proceedings, the patentee also filed a request consisting of a single claim which reads as follows: "use of gaseous NO for the manufacture of a pharmaceutical for the systemic treatment of systemic blood platelet aggregation and coagulation via the inhalation route". The TBA looked at the patent description and drawings to interpret the claim and, despite the opponent's objections, concluded that the phrase "for the systemic treatment of systemic blood platelet aggregation and coagulation" simply addressed the treatment of those medical conditions requiring preventative / therapeutic treatment by means of platelet de-aggregation and anticoagulation. It considered that the claim was correctly drafted in "Swiss form" and the claimed subject-matter did not encompass methods of treatment of the human or animal body. It therefore concluded that the claim was potentially allowable.

However, as the opponents also challenged this claim on the basis of novelty and inventive step which had not previously been considered, the TBA remitted the case to the Opposition Division.

T 0606/06: Heating and incineration device / Mark Ludwig

TBA Decision of 23 April 2008

Chairman: U. Krause

Members: C. Donnelly and K. Garnett

In this case, the applicant had prosecuted a claim which differed from the claim as filed in that an essential feature had been deleted. The Examination Division had ruled that the amended claim introduced subject matter extending beyond the application as filed, contrary to Article 123(2) EPC. The applicant argued that the basis for the extension of the subject matter could be found in the originally filed abstract, but the Examination Division held that in accordance with decision T 246/86 the abstract could not serve as a basis for interpreting the scope of the protection sought.

The TBA dismissed the applicant's appeal, as an abstract does not form part of the content of the application as filed within the meaning of Article 123(2) EPC, affirming the decision in T 246/86. The Board referred to Article 85 EPC, which limits the use of the abstract to technical information and cannot be taken into account for any other purpose, including interpretation of the scope of the protection afforded. If the abstract could not be used to interpret the content of the application, it could not be part of the application.

According to the Board the fact that Article 78(1) EPC requires an application to contain an abstract, and that Rule 35(5) states that the abstract is one of the documents which should make up the application, did not change the fact that the abstract does not form part of the application as filed. Furthermore, the Board dismissed the appellant's argument that use of the word "merely" in Article 85 EPC to limit the use of the abstract was minimalistic and did not mean that the abstract could only serve for use as technical information. Turning to the Oxford English Dictionary, the Board held that the ordinary meaning of "merely" in this context was "only (what is referred to) and nothing more". This was reinforced by the changes made in the wording of Article 85 EPC 2000, where the abstract is stated to "serve the purpose of technical information only". The French and German language versions of Article 85 EPC had not been amended by the introduction of EPC 2000, and therefore the change was held not to have been intended to effect any change in meaning. This change in wording therefore supported the Board's interpretation of Article 85 EPC.

The Board also dismissed a number of arguments by the appellant that various rules of the Implementing Regulations regarding the form, content and publication of the abstract meant that the abstract should be considered as forming part of the application as filed for the purposes of Article 123(2) EPC. It is therefore clear from this case that the abstract cannot be used to support an amendment of a patent application under Article 123(2) EPC.

EPO Procedure (Article 108 EPC 1973)


T 1465/07: Ion mobility and mass spectrometer / Indiana University Research and Technology Corporation

TBA Decision of 9 May 2008

Chairman: A. Klein

Members: B. Muller and M. Rayner

This was an appeal of a refusal to re-establish rights following the applicant's attorneys missing the deadline for appealing the refusal of a patent application relating to mass spectrometers. The attorneys had received instructions to file the appeal, but missed the deadline and only realised 6 days later that they had done so.

The attorneys argued that the rights should be re-established because the time limit had been missed despite all due care and attention having been taken. Specifically, the attorneys claimed to operate two independent diary systems, with procedures in place which involved the relevant file been put to one side and the attorneys checking the deadlines entered into the diaries by their Records Department. Despite the claim that these procedures had been operated "extremely reliably" with no deadline having been missed in the past, the procedure was not operated properly in this case, with the primary diary being by-passed and the cross check with the backup diary not being carried out by a secretary who was newly installed in her position.

The attorneys argued that their checking system included the cross check within the meaning of T 9/86 that is required for large firms, and, relying on T 869/90, that should the Board find all due care had not been taken, the principle of proportionality should be applied.

The TBA had expressed a provisional opinion that the restoration application should not be allowed. It is interesting that, before reaching its decision on the appeal, the TBA analysed the re-establishment of appeal time limits in the wider context of the right to access to a court, including rights pursuant to the European Convention of Human Rights. It expressly confirmed that the principle of proportionality applied to limitations on such rights of access, and, as a consequence, means which are not appropriate, necessary or proportionate in relation to the aim of legal certainty should not be imposed. It also held that the length of time after the deadline that the error was realised was not a relevant factor. Nevertheless, the TBA found that an independent cross check and reasonable supervision of the secretary had been absent in this case, and the appeal was refused.

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.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.