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.

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