The sofosbuvir conundrum

Few patents get famous enough to make it to the headlines of the general press. Some Apple patents are among them, such as those nicknamed “slide-to-unlock” or “rubber-banding” – especially thanks to the world war waged against Samsung. Other patent celebs include those on blockbuster pharmaceutical drugs.

In this latter category, one patent family in particular has attracted some fuss over the past few years. It is the one which covers the drug sofosbuvir, marketed under the name Sovaldi.

Blockbuster drug patents can beat even patents on blockbusters.
Blockbuster drug patents can even beat patents on blockbusters.

Sofosbuvir has markedly improved the treatment of hepatitis C virus (HCV) infection. But in many countries, in the absence of any generic version of the drug, the price of HCV treatment has skyrocketed as a result. This has aroused vocal protests by a number of NGOs (see e.g. here).

In Europe, the sofosbuvir patent (or at least one sofosbuvir patent) is EP 2203462, owned by Gilead. It was opposed after grant by ten different parties, including the NGO Médecins du monde, a number of generic manufacturers, and a number of straw men. Oral proceedings took place on October 4-5 in Munich. The only public information available as of today on the online register is that the patent was maintained in amended form. The minutes of the oral proceedings and the written decision of the opposition division have not been issued yet.

Tufty the Cat has recently made assumptions on his blog regarding the claims which were uphed by the opposition division. I have now received a confirmation by someone who attended the oral proceedings that Tufty got the claim amendment right.

But there seems to be some confusion, to say the least, after these oral proceedings. Indeed, Gilead and its opponents seem to have different views as to whether the amended patent still covers sofosbuvir or not.

In order to understand how there can be such a controversy, it is necessary to go back to some basic notions of stereochemistry.

There are many examples of chemical compounds having different 3D atom configurations although they share the same 2D chemical formula. These different configurations are referred to as stereochemical forms, or diastereomers, of a given compound.

In the pharmaceutical field, identifying the different stereochemical forms of a compound is of prime importance, as diastereomers often have different pharmacological effects. By way of example, the so-called (S) stereochemical form of ibuprofen is a hundred times more active than the so-called (R) stereochemical form.

Besides, such chemical compounds are generally not synthesized as stereochemically pure compounds, but as a mixture of diastereomers. It is often necessary to further purify this mixture in order to isolate the most active diastereomer.

Gilead’s patent as granted contains six claims, including three independent claims 1 to 3. For once, let’s start with claim 2.

Claim 2 is directed to a compound of the following formula:

sofos-claim-2

This is sofosbuvir.

Then claim 3 is directed to another compound of the following formula:

sofos-claim-3

This other compound looks very much like sofosbuvir, since it is its diastereomer. The difference between the two compounds is highlighted in yellow. In the sofosbuvir formula, the P-O bond is shaded in black and the P-N bond is hatched, which means that, in 3D, the oxygen atom is in front of the phosphorus atom, while the nitrogen atom is behind. It is exactly the opposite in the diastereomer of claim 3.

Now, here is the formula of the compound of claim 1:

sofos-claim-1

In this formula, the relevant P-N and P-O bonds are depicted as simple lines, which means that the 3D configuration is not specified.

Claims 4-6 simply recite a composition comprising the compound of one of respective claims 1-3 and a pharmaceutically acceptable medium.

According to my source, claims 2, 3, 5 and 6 were found by the opposition division to extend beyond the contents of the application as filed. As a result, the patent proprietor filed an auxiliary request in which these claims were deleted, and only granted claims 1 and 4 remained. The opposition division came to the conclusion that this auxiliary request meets all the requirements of the EPC, and made the interlocutory decision of maintaining the patent in this amended form.

The decision should soon be issued in writing, and will be open to appeal by all parties.

And now, here comes the conundrum.

The patent as amended during first instance opposition proceedings no longer contains claims 2 and 5 which were specifically directed to the sofosbuvir compound and the sofosbuvir-containing medicament. The question is whether the remaining claims 1 and 4 still protect sofosbuvir and sofosbuvir-based drugs.

One possible interpretation is that claim 1 is a generic claim which protects both diastereomers. It is broader than claim 2, and therefore the scope of the patent remains completely intact. Quite frankly, I think this is the interpretation that most patent attorneys would consider as the most logical one.

However, another possible interpretation is that claim 1 is directed to a diastereomeric mixture, i.e. a mixture of the compounds of claims 2 and 3 as granted. Arguments in favor of this interpretation could be that: claim 1 does show a 3D configuration in other parts of the molecule; thus, the absence of 3D information around the phosphorous atom means that such information cannot be provided, because both forms are present in the compound; furthermore, granted claims 2 and 3 are independent claims and do not depend on claim 1 which confirms that they are not particular embodiments of claim 1.

According to this second interpretation, a generic sofosbuvir drug would arguably no longer infringe the patent – as the drug would not contain a diastereomeric mixture.

It seems that the description of the patent does not fully clearly support one interpretation over the other.

I could very well see a French court coming to the conclusion that since the claim specifically directed to sofosbuvir was deleted, the patent may not possibly protect this molecule any longer. Maybe the written decision of the opposition division will contain a position as to what claim 1 means. But then, maybe not. And anyway, any position that they may have taken is not binding on national courts.

With that in mind, I would certainly not bet my life on either interpretation. Would readers be keen on taking a vote?

I would like to thank my source for this hot information. I have also been told that a number of interesting topics were discussed during the opposition proceedings, in connection with extension of subject-matter, priority and inventive step. So we should watch for the written decision of the opposition division when it is issued.


CASE REFERENCE: ongoing opposition proceedings against EP 2203462 to Gilead Pharmasset LLC.

Request not found

It is always much more difficult to get what you want from the patent office when you do not know exactly what you want. Or even worse, when the patent office does not know exactly what you want.

Looking at a recent batch of EPO case law decisions issued in French, I came across one example which illustrates this harsh principle. I realized a little bit late that the decision had already been discussed on the Blog européen des brevets, but here it goes anyway.

European patent No. EP 1265983 assigned to the Swiss company Danstar Ferment AG was opposed by Lesaffre International. Back in 2011, the patent was revoked by the opposition division. The patent proprietor appealed, and sadly for all users of the patent system, it is only five years later that the Board of appeal issued its decision, which is… that the appeal was inadmissible! Unfortunate that a case such as this one could not be disposed of earlier.

The reason for the inadmissibility of the appeal was that “the request which defines the object of the appeal is unclear (article 108 EPC in combination with Rules 99(1) and 99(2) EPC) (reasons, 6).

The board summarized the legal framework leading them to this conclusion in section 2 of the reasons for the decision:

According to established case law of the Boards of appeal, the appellant’s case must be presented in a consistent, clear and substantiated manner in the statement of the grounds of appeal, not only in relation with the appellant’s arguments, but also in relation with its requests (see, inter alia, decisions T 760/08 of January 19, 2010, reasons 5, and T 446/00 of July 3, 2003, reasons 2.1.1). Indeed, the purpose of the statement of the grounds of appeal as well as of the notice of appeal is to define the extent of the appeal. This definition is solely and exclusively made by the appellant (see, inter alia decision T 2532/11 of October 14, 2013, reasons 2.5.1). It is important to emphasize that, according to established case law, it is also the parties’ duty to state their requests and decide on the order of these requests (see, inter alia, decision T 148/06 of January 8, 2008, reasons 2). 

Point well taken. So, what happened in this case? First, the notice of appeal itself did not expressly state any request except that the decision under appeal should be set aside. Second, the statement of the grounds of appeal contained a discussion on claim 1 as granted and then on four auxiliary requests (referred to as “propositions of auxiliary requests” at some point in the brief).

The problem is that Danstar’s main request in first instance was not the maintenance of the patent as granted (rejection of the opposition), but rather the maintenance of the patent in an amended form.

The Board stated that it was thus unclear whether the appellant’s intention was to replace the main request filed in first instance with a new main request according to which the opposition should be rejected.

Also, the Board claimed that the so-called “propositions of auxiliary requests” could be meant to replace the previously filed auxiliary requests but could also be additional auxiliary requests.

Therefore, said the Board,

The appellant did not refer one or more clear, precise and converging requests to the Board, which would make it possible to unambiguously define the object of the appeal. 

As a side note, I wonder why the Board mentioned “converging” requests in this sentence. Surely, the converging nature of the requests is only of relevance for the admissibility of the requests themselves, and not for the admissibility of the appeal as a whole. Or is it not?

The Board made reference to some decisions, in particular T 1554/12 and T 1538/09, in which the appeal was held admissible although the appellant’s requests were contradictory or imprecise. The difference between the present case and these earlier ones was, according to the Board, that in the earlier cases the intent of the appellant was clear (despite the imprecise wording), whereas it the present case it was not.

I wanted to see for myself and thus had a look at Danstar’s statement of grounds of appeal. One can only concur with the Board that no main request was set forth in the brief. Since claim 1 of the patent as granted was discussed, it could be argued that the appellant’s intent was to go back to this original version (as opposed to the main request cited in the first instance decision, which is not cited in the brief).

On the other hand, no corresponding set of claims was attached, and the brief was silent on the dependent claims. Therefore, the Board could also have noted that the appellant’s intent with respect to the dependent claims was not clear – although, again, it may be logical to surmise that the dependent claims were also maintained unamended, just like in the auxiliary requests.

Speaking of auxiliary requests, the Board’s view on those may be considered somewhat strict. The four sets of claims were indeed attached to the statement of grounds of appeal, and the unfortunate expression “propositions of auxiliary requests” used at some point in the brief probably did not introduce a fatal ambiguity. Indeed, it was stated at the beginning of the letter: “we attach four auxiliary requests” (not four “propositions“).

In short, it seems relatively clear that the four sets of claims attached to and commented on in the statement of grounds of appeal were those that the appellant intended to rely on in the course of the appeal proceedings.

An interesting question is whether this makes any difference though. Possible answer 1 is: no, if the Board believes that the main request cannot be properly understood, the appeal cannot be decided upon at all, and it has to be held inadmissible. Possible answer 2 is: yes, the Board could disregard an unclear main request and then directly examine the auxiliary requests.

Practically speaking, the appellant did not really fight, which may partly explain the decision. They did not reply to a communication from the Board containing a preliminary opinion which was negative for them both on the admissibility of the appeal as well as on the merits of the case, and both parties renounced their right to oral proceedings.

Anyway, the take home message for us European patent professionals is that we should be crystal clear when we state our requests, and preferably use the keywords that the EPO departments expect from us (“main request“, “auxiliary request No.X“, etc.), as they are not huge fans of guesswork.

There is always a way to know what an appellant's requests are.
There is always a way to know what an appellant’s requests are.

CASE REFERENCE: T 1435/11, Board of Appeal 3.3.08, May 20, 2016, Danstar Ferment AG v. Lesaffre International.

Search for meaning

Today’s Board of appeal decision was already reported on elsewhere, but it may be worth another commentary, since it relates to a fundamental aspect of patent law, namely the rules of claim interpretation, and more specifically the question of how much one should rely on the description and drawings when interpreting the claims – in particular for the assessment of novelty and inventive step.

One could think that such a basic issue should have long been very clearly settled. Well, one could think again.

Art. 69(1) EPC provides that “the extent of the protection conferred by
a European patent or a European patent application shall be determined by the claims. Nevertheless, the description and drawings shall be used to interpret the claims“.

The official Case Law book (Case Law of the Boards of Appeal of the European Patent Office, 7th edition, section II.A.6) reminds us that a number of decisions referred to Art. 69 as a legal basis for interpreting the claims in the light of the description and drawings. Others pointed out that Art. 69 is concerned with the question of infringement, and is therefore only for courts of law to deal with, and not for departments of the EPO (except when assessing a potential extension of scope of protection after grant – Art.123(3) EPC).

For example, in T 1279/04, the Board explicitly stated that a different standard should be applied for interpreting the claims in examination or opposition proceedings and in infringement proceedings – which is somewhat reminiscent of the U.S. approach. As the Case Law book puts it, according to this decision:

in examination and opposition proceedings the value of future legal certainty was paramount. […] There was no case for anything other than a strict definitional approach, given that in this procedural stage the claim could and should be amended to ensure legally certain patentability, in particular novelty and inventive step over any known prior art. Amendment rather than protracted argument should be the answer to genuine difficulties of interpretation in all aspects of the examination and opposition procedure.

The strict approach advocated in T 1279/04 does not strike me as being commonly applied.

The position that first instance departments are officially supposed to follow (Guidelines for examination, F-IV, 4.2) seems somewhat more flexible. It refers to the description and drawings in the context of “particular cases“, where “the description gives the words a special meaning“. Otherwise, reference is more generally made to the meaning that words “normally have in the relevant art“, and to the necessity of attempting “to make technical sense out of” the claim.

And in practice, I feel that most of the time parties as well as the EPO tend to turn first and foremost to the description when interpreting the claims – and not just in particular cases when there is a special definition in the spec.

So, back to today’s decision T 1871/09, which sheds another interesting light on claim interpretation in view of the description.

The Board provided extensive general remarks on claim interpretation, and then applied their approach to the case at hand, where several terms raised interpretation issues.

A first important point is that the Board followed the approach adopted in T 556/02, per which reliance on the description and drawings to interpret the claims is justified by a general principle of law:

The Board was confronted with diverging argumentations from the parties regarding the meaning that the claims should have, and in particular some concepts that they refer to. The Board endeavored to look at the specification of the patent taken as a whole for the meaning that the skilled person would give to them. The Board applied a general principle of interpretation, of which Article 69 EPC is only an illustration, per which a part of a document cannot be interpreted independently from its context, and to the contrary the entirety of the document should be taken into consideration, when looking for the meaning of a certain statement which is made. […] Therefore, even if the provisions of Article 69 EPC on the scope of protection do not […] apply to departments ruling on opposition cases, the principle set out in this article is nevertheless applicable (reasons 3.1 – this passage and the following ones were freely translated from the French original version).

This makes sense and is a nice way to justify what most people would intuitively think is right – even if not explicitly enshrined in the Convention – i.e.: do not read the claims in isolation without considering the rest of the patent.

In the next paragraph, the Board recalled that the reader is the skilled person, and that he/she is the one supposed to interpret the claims. This is a very classical statement.

Then, the Board went on to warn that:

The interpretation principle recalled here applies to all, that is not only the opponents but also the patent proprietor, and third parties as well. The patent proprietor cannot possibly attribute a meaning to the terms that are used or to the features recited in a claim which the general context does not really make it possible to establish. It is thus not justified in this respect to rely on one passage of the description instead of another, so as to give a particular color to some terms that are used (reasons, 3.3).

So, patentees have to deal with their description as a whole. They cannot rely on just one paragraph which may support their preferred interpretation, without looking at other paragraphs which provide a different view.

And then comes the last bit of the general remarks, which is probably the most interesting one:

That said, the specificity of a patent specification should not be forgotten, that is the claims are supposed to generalize particular embodiments effectively disclosed in the patent specification. To which extent this specificity plays a role in the interpretation depends on the case. In this respect, some aspects such as the purpose of the invention and the number of examples are especially relevant. But it remains that the terms chosen in the claims are supposed to have been selected to serve this objective of generalization of particular embodiments. As a consequence, when the patentee omits, voluntarily or not, to define some concepts, or accepts that certain ambiguities remain in the patent description related to the request at stake, they cannot validly hide behind a limitative interpretation of the terms of the claim, at least insofar as the general interpretation which is retained makes sense on the technical standpoint and is consistent with the general teaching of the patent (reasons, 3.4)

Oftentimes in opposition proceedings, a patent proprietor would like a narrow interpretation of the claims to be used – in order to resist novelty and inventive step challenges.

One important consideration may however play against this defense: by nature and by function, claims are supposed to be more general than the embodiments disclosed in the description. Therefore, the fact that the description offers a narrow illustration of the claims may not by itself validly support the narrow interpretation of the claims. Or, to put it otherwise, the scope of the claims cannot be assumed to be limited by the “scope” of the description.

These principles were applied by the Board to the case at hand a number of times.

Claim 1 of the main request (patent as granted) read as follows:

Spectral content enrichment process of a signal having an incomplete spectrum including a first spectral band, the process consisting of the following stages:
– at least one transposition of the spectral content of the said first band into a second spectral band not included in the said spectrum in order to generate a transposed spectrum signal of restricted spectrum, to the said second spectral band;
– transformation of the spectrum of the signal with the transposed spectrum to obtain an enrichment signal;
– combination of the incomplete spectral signal and of the enrichment signal to produce an enriched spectral signal;
characterized in that the generation of the transposed spectral signal includes a whitening stage of the said spectral content such that the spectrum of the signal to the transposed spectrum is a whitened version of the said spectral content.

A device with spectral bands.
A device with spectral bands.

Novelty of this claim over a prior art document D1 was discussed. The two patent proprietors argued that the document did not disclose a process wherein the second spectral band is “not included” in the spectrum.

Remarkably, the Board rejected both the interpretation of the term “included” offered by the patent proprietors and the one offered by one of the opponents. The opponent had put forward a mathematical definition of the term. But the Board held that this “turns out to be too theoretical and does not take into account the content of the specification of the patent, where nothing suggests that these usual terms should be given a particular mathematical meaning” (reasons, 5.3.1).

As for the patent proprietors, their position was that the first and second spectral bands should necessarily be adjacent or separated. The argument was based on two embodiments in the description corresponding to these two possibilities. But the Board decided that the claim could not be interpreted in such a restrictive manner:

The passages of the patent relating to these embodiments are very general and do absolutely not suggest that the disclosed solutions are the only ones which can be contemplated. Therefore, in the absence of indications in the patent as to the meaning which the concept of inclusion should have, and taking into account the fact that claims are meant to generalize the teaching of the disclosed embodiments, the Board considers that the expression “not included” should be given a general meaning. The formulation used can thus not be interpreted as excluding the partial superposition of spectra of the initial and transposed signals (reasons 5.3.1). 

A second point of interpretation concerned the concept of “whitening“, which had to be compared with the notion of sub-band energy equalization in the prior art. The patent proprietors submitted that “whitening” the signal meant making the peaks of the spectral envelope more uniform, which was different from sub-band energy equalization.

Even though the other parties did not directly criticize this definition of whitening, the Board was not fully satisfied, because the definition “is not devoid of ambiguity” (reasons, 5.3.2). Then followed a detailed technical discussion showing that since the notion of spectral envelope is not clearly defined, there are many different ways to whiten the signal according to this broad definition. One of the opponents had filed an example showing that a sub-band energy equalization was tantamount to one possible form of whitening, and the Board was convinced by the demonstration.

One important last argument was discussed in this respect. Claim 1 called for one step of transposition and one step of transformation, the whitening being part of the transposition step, and being therefore before the transformation step. But in the prior art document, the whitening discussed above took place at the same time as the transformation. So, on the face of it, there was a difference between the process of claim 1 and that of the prior art.

But the Board decided that claim 1 should be interpreted more broadly than its literal wording, in view of the description:

When the granted patent is taken into account, this however leads to a generalization of the claimed process beyond its literal interpretation. Indeed, paragraph [0033] of the patent mentions the possibility of whitening and filtering in one operation by a transfer function filter equal to the product of the respective transfer functions of the whitening filter and of the transformation filter. It is unfortunate that the version of the description was not adapted to the version of the claims considered patentable by the Examining division and results in what is above all a problem of clarity of the claimed process. The version of the patent is however the entire responsibility of the appellant. Although no clarity objection […] can be raised against the granted version of the patent […], the patent proprietors must nevertheless accept that any contradiction, ambiguity or imprecision may be used by the opponents who can in particular rely on the extended scope of the claims made possible by such circumstances. In the present case, the argument that D1 reproduces the process of claim 1, as interpreted in the light of the description, is thus justified. 

All in all, this decision is actually a serious warning to applicants, who must carefully check whether the description is consistent with the claims, bearing in mind that:

  • On the one hand, the fact that the description discloses specific embodiments cannot by itself justify a narrow interpretation of the claims, since the function of the claims is such that they are supposed to be broader than these embodiments.
  • On the other hand, if the invention appears to be somewhat broader than the claims literally imply, based on the description (for instance because the description was not properly adapted to amended claims), then the claims may need to be reinterpreted in a broader manner.

Readers interested in the outcome of the case will have to wait a few more years, since the Board remitted the case to the first instance for further prosecution on the basis of an auxiliary request, after admitting new relevant documents into the proceedings.

As a final remark, there has been a long-standing tradition for French courts to rely a lot of the description and drawings to come up with their own understanding of what the invention really is about – irrespective of the exact wording used in the claims.

Does the French nationality of the patent proprietors explain why such a large part of the legal discussion in this case revolved around claim interpretation in view of the description? Possibly, but it seems that the description did little to help them in Munich after all.


CASE REFERENCE: Board of Appeal 3.4.01, T 1871/09, Orange et al. v. Stefanie Kremer et al., November 24, 2015.

Hidden in plain sight

Sometimes, an object is best hidden in plain sight. Like the diamond in the crystal chandelier of Alfred Hitchcock’s classic motion picture Family Plot.

The same can be true of Easter eggs, which many readers may have hunted over the weekend – successfully, I hope.

And the same can be true of a teaching in a prior art document, based on a recent decision which left a number of us wondering whether Board of Appeal 3.3.10 may have discarded or at least amended a long-standing novelty test endorsed by the Enlarged Board of Appeal.

A well hidden technical disclosure in an Easter egg
A well hidden technical disclosure in an Easter egg

Lionel Vial reports on that case.

The decision we will discuss today relates to the difficult question of knowing under which conditions the chemical composition of a product is made available to the public.

Decision T 719/12 was rendered on October 29, 2015 on an appeal formed by the proprietor (appellant) of European patent No. 1539673 against the decision of the opposition division to revoke the patent. The decision of the opposition division was based on the lack of novelty of the subject-matter of claims 9 and 10 in view of the disclosure of document (1) (Blicke et al. (1942) J. Am. Chem. Soc. 64:451 to 454).

Claims 9 and 10 respectively claimed the compounds of formulae II and VI:

F2

wherein R1 can be a thienyl (i.e. the cycle shown in formula VI), R2 can be a C1-8 alkyl (i.e. a -CnH2n+1 group where 1 ≤ n ≤ 8) and R4 is methyl (-CH3), ethyl (-CH2CH3), isobutyl (-CH2CH(CH3)2) or tert-butyl (-C(CH3)3).

Document (1) identified the compound methyl-2-(α-thenoyl)-ethylamine by its chemical name. For those not versed in the chemical arts, here is what it looks like:

methyl-2-(α-thenoyl)-ethylamine
methyl-2-(α-thenoyl)-ethylamine

It can readily be seen that this compound falls within formulae II and VI of the opposed patent.

Indeed, this fact was contested by neither of the parties as is noted by the Board in point 2 of the reasons for the decision and the question was rather whether methyl-2-(α-thenoyl)-ethylamine had been made available to the public.

There the Board recalled that:

It is the established jurisprudence of the Boards of Appeal that the subject-matter described in a document can only be regarded as having been made available to the public, and therefore as comprised in the state of the art pursuant to Article 54(1) EPC, if the information given therein is sufficient to enable the skilled person, at the relevant date of the the [sic] document, to practise the technical teaching which is the subject of the document, taking into account also the general knowledge at the time in the field to be expected of him (see T 206/83, OJ EPO 1987, 5) (point 2.2. of the Reasons).

However, even though document (1) aimed at synthesizing methyl-2-(α-thenoyl)-ethylamine through a Mannich reaction or the steam distillation of the corresponding tertiary amine, the authors of the document could neither isolate it nor obtain it when the reactions were actually carried out, in spite of the use of conditions which were considered favorable for its formation. The Board thus went on to consider that document (1) alone did not make the compound methyl-2-(α-thenoyl)-ethylamine available to the public, since the specific attempts to prepare it, which are described in said document, failed (see point 2.2 of the Reasons).

The opponent (Respondent) replied by arguing that document (1) did nonetheless make the compound methyl-2-(α-thenoyl)-ethylamine available to the public, since on repeating the preparation of the tertiary amine methyl[di-2-(α-thenoyl)-ethyl]amine 5 of document (1) in experimental report V1 it submitted, the compound methyl-2-(α-thenoyl)-ethylamine was indeed produced (but went unnoticed by the authors of document (1)).

This did not convince the Board:

[…] the Board holds that in view of the categorical statement in document (1) that despite attempts to synthesise it, the secondary amine could be neither isolated nor obtained, the skilled person, at the date of publication of document (1), would not have seriously contemplated repeating its teaching in order to undertake further investigations as to whether the secondary amine was formed after all. Thus, regardless of whether the report V1 repeats the method of document (1) exactly, the Appellant contesting this fact (see point IV above), the skilled person had no motivation to perform the steps in the experimental report V1 which are not disclosed in document (1), namely of analysing the product mixture obtained or of recrystallising from the mother liquor (point 2.3 of the Reasons, emphasis added).

Hence, even if methyl-2-(α-thenoyl)-ethylamine were inevitably produced by a method described in document (1), since its presence remained undetected by the skilled person, it had not been made available to the public (point 2.3 of the Reasons, emphasis added).

Well so long for the astute novelty attack, but doesn’t that ring a bell? G 1/92 of course:

The chemical composition of a product is state of the art when the product as such is available to the public and can be analysed and reproduced by the skilled person, irrespective of whether or not particular reasons can be identified for analysing the composition (emphasis added).

Except that the Board appeared to favor an opposite view to that of the Enlarged board of appeal. Unfortunately, the Board did not discuss the particulars of this case with respect to G 1/92, leaving us in uncertainty as to the interpretation of this decision: is it to be understood as going against G 1/92 or can it be reconciled with it?

Let’s try to see by ourselves.

A reminder of the case behind G 1/92 might be useful at this stage.

G 1/92 followed from a question referred to the Enlarged board of appeal by the President of the EPO pursuant to Article 112(1)(b) EPC which arose as consequence of decision T 93/89. It was held in this latter decision that if the composition of a commercially available product (e.g. aqueous polyvinyl ester dispersion) can be established only by a chemical analysis, the ingredients of the product (e.g. polyvinyl acetate, native starch, polyvinyl alcohol) have not been made available to the public unless there was a reason for experts to investigate it (see Headnote and point 8.2 of the Reasons).

The case at hand thus differs from the case at the origin of G 1/92 in that the product is not “directly” available to the public since it has to be manufactured before it can submitted to a chemical analysis (as opposed to a commercially available product). As such, decision T 719/12 could be interpreted as meaning that when a product is not commonly available to the public and needs to be manufactured to become so, then it would become relevant that one of skill in the art should have a special motivation to perform the manufacture and the analysis of the product.

However, this point of view is not totally satisfying as this would amount to making a distinction between the different means by which any information is made available to the public under Article 54(1) EPC, i.e. public use vs. written description, which is something G 1/92 specifically warned against (see point 1.2 of the Reasons).

Accordingly, even though the Board in decision T 719/12 does not explicitly take position against G 1/92, one might wonder whether after more than 23 years of good service the latter has not been silently euthanized.

Thank you Lionel. It is indeed somewhat strange to read about the absence of motivation for the skilled person in the context of a novelty analysis.

Of course, the facts of the case were very specific, with on the one hand a prior art document explicitly stating that a compound is not obtained, and on the other hand a recreation of the prior art by the opponent showing that the compound is indeed obtained.

Such recreations are always heavily criticized by the patent proprietor, as there are inevitably some details missing in the prior art disclosure, which need to be completed by the experimenter – and this case is no exception (see section IV of the Summary of Facts and Submissions).

With that in mind it does not really come as a surprise that the Board preferred to rely on the explicit statement in the prior art document rather than on a posterior, disputed, demonstration. But the reasons put forward by the Board do come as a surprise.


CASE REFERENCE: Board of Appeal 3.3.10, T 719/12, Lonza AG v. Merck Patent GmbH, October 29, 2015.

A fishy appeal?

It is not an easy task to report on case law from the EPO Boards of Appeal, as there are so many commentators in the blogosphere (and elsewhere) poised to jump on any fresh decision that being original is tricky, unless you do high frequency posting. Nevertheless, I am wondering whether decisions drafted in French might as a general rule fly a little bit more under the radar, since French is certainly the official language of the EPO which is the least spoken by the European patent profession.

With that in mind, here is a report on one of these low flying decisions, which I find noteworthy for two reasons. The first reason is that the main claim of the patent in suit was directed to a container containing precooked tuna fish, which opens up an ocean of possible aquatic puns for this blogger. And the second reason is that the decision deals with an interesting point of law regarding the burden of proof in appeal proceedings.

The patent owned by Brittany-based Etablissements Paul Paulet had been revoked by an opposition division due to insufficiency of disclosure.

Claim 1 as granted was the following:

A rigid container containing foodstuff, the container comprising a receptacle and a cover and being made of a material selected from aluminum, steel, glass, or a plastics material that is oxygen-proof, the foodstuff being constituted by pre-cooked fish that is in solid form, eventually comprising an additive, a preservative, or a small amount of water or oil, characterized in that

– the closed container presents substantially no liquid after sterilization, such that the liquid content is less than 10% of the total weight of the content, and

– the container contains only the foodstuff and a gas, wherein the volume content of dioxygen in the gas is less than 15%, the gas being nitrogen.

Both features of the characterizing part of the claim were viewed by the opposition division as raising implementation issues.

If we focus on the liquid content feature, the opposition division noted that the patent taught to place the precooked fish into the container, add liquid nitrogen which will be turned into gaseous nitrogen, then close the container and sterilize the product. Based on various statements made by the patent proprietor during the opposition proceedings and information contained in the patent itself, as well as in an experimental report referenced as T4 (filed – unfortunately – by the patent proprietor), it could be concluded that, during the sterilization step, the liquid content in the container can change, and in particular can increase or decrease. Many factors may influence this change in the liquid content, including the type of fish, the precooking procedure, the shape of the fish, the additives and the conditions of sterilization. The opposition division deemed that the patent did not teach how to control these various parameters.

A container for fish hopefully containing more than 10% of liquid
A container for fish hopefully containing more than 10% of liquid

With its statement of grounds of appeal, the patent proprietor filed a modified version of claim 1 as a main request (corresponding to one of the auxiliary requests discussed in first instance). In this modified version of claim 1, the material of the container was somewhat restricted, and the nature of the fish was further specified to be “pre-cooked tuna fish in solid form“.

With the summons to oral proceedings, the Board expressed the preliminary opinion that there was an issue of sufficiency of disclosure with the liquid content feature, although it did not share the view of the opposition division regarding the other feature of the nitrogen / oxygen content.

One month before the oral proceedings, the patent proprietor submitted a new document T18, which was an experimental report focusing on the processing of tuna fish. The admissibility of document T18 at this late stage of the proceedings was debated in front of the Board, in view of R. 13(3) of the Rules of Procedure of the Boards of Appeal.

The patent proprietor’s argument was that:

  • the first instance decision relied on experimental report T4, in which experiments were conducted on billfish product;
  • the main claim was now restricted to tuna fish, so that the first instance decision was no longer applicable;
  • the Board raised a new objection in the preliminary opinion by stating that even with precooked tuna fish the variations in liquid content were unpredictable;
  • therefore the patent proprietor had reacted in a timely manner by filing the new experimental report T18 focusing on tuna fish.

The Board rejected the argument by analyzing the first instance decision, which mentioned a number of ill-controlled parameters influencing the liquid content and not just the type of fish; and by noting that the main request in the appeal was the third auxiliary request in first instance and had thus also been rejected by the opposition division.

The most interesting part of the discussion relates to whether the admission of T18 into the proceedings would violate the opponents / respondents’ right to be heard – in view of the lateness of the filing. The appellant said no, because the respondents had failed to provided detailed justifications and evidence in their response to the statement of grounds of appeal; on the other hand, the appellant did not have to file additional evidence with its statement of grounds of appeal since:

the burden of proof of insufficiency of disclosure lies exclusively with the opponents, in all circumstances. This also applies on appeal further to a decision revoking the patent for insufficiency of disclosure, notably when the grounds of the decision at stake no longer adversely affect the appellant due to a modification of the claimed subject-matter (reasons, 1.4.1).

The Board rejected the argument in view of the very nature of the appeal proceedings.

The respondents brought forward elements during the opposition proceedings which were apparently sufficiently credible as to the impossibility to carry out the invention in a systematic and reproducible manner by relying on the information contained in the patent; moreover, this information would be too limited and contradictory. This led the opposition division to hand down the decision at stake, which was duly reasoned. This decision not only brings an end to the opposition proceedings, but also as a consequence assigns different roles to the parties for the appeal stage. Once the patent has been revoked, it is up to the patent proprietor as the appellant to take a more active part and present, firstly, a detailed argumentation in its statement of grounds of appeal, even if by filing a new set of claims the grounds for the challenged decision seem to be overcome. The appellant cannot simply wait for the respondents to demonstrate the invalidity of the patent.

The patent proprietor, as the appellant, must therefore act against the challenged decision, that is, must, in the present case, demonstrate that common general knowledge does make it possible to carry out the invention based on the patent. This demonstration must be complete and not selective, without waiting for the Board or the parties to invite it to develop it more. In this respect, the appeal proceedings are not a continuation of the opposition proceedings but a new procedure instituted by the appellant. Therefore, the principles which initially governed the opposition proceedings are no longer necessarily applicable at the appeal stage, and those stated in the Rules of Procedure of the Boards of Appeal replace them, notably the duty to provide the complete means in view of which the decision cannot be maintained. A patent proprietor who thinks that they can discard the basis for the challenged decision owing to grounds of appeal limited to only one aspect of said decision runs the risk of later being in a situation where the filing of additional grounds or evidence during the appeal proceedings may be considered late under articles 13(1) and/or 13(3) RPBA (reasons 1.4.2).

I think it is fair to say that the burden of proof of insufficiency of disclosure on the opponents is a very heavy one in opposition proceedings.

However, according to the present decision, the onus shifts on appeal, if the patent is revoked by the opposition division. More generally, it can be derived from the Board’s comments that the first instance decision is presumed valid until the contrary is proven – although I am not sure that this has often been stated in this way in the case law.

On the merits, the Board reached a similar conclusion as the opposition division regarding the unpredictability of the liquid content in the container after sterilization, and therefore dismissed the appeal.

The parties will have the opportunity to continue the discussion and fish for further arguments on the liquid content feature, since there are opposition proceedings pending in connection with the divisional patent, and since the same feature is present in the independent claims. My guess is it will be an uphill battle for the patent proprietor but at least they can hope to be able to rely on the additional evidence that the Board has refused to take into account in this case.


CASE REFERENCE: Board of Appeal 3.2.07, T 30/15, Etablissements Paul Paulet v. Princes Limited & Bolton Alimentari S.P.A, January 20, 2016.