EP 3 092 035 B1 relates to systems, devices, and methods for detecting and treating cardiac arrhythmias and, more specifically to multiple device systems, whereby the therapy activity of a first implantable medical device methods is communicated to another implantable medical device.
Brief outline of the case
The patent was revoked as the OD considered that claim 1 as granted and all claims of AR1-30 were infringing Art 123(2).
The board decided that claim 1 as granted did not infringe Art 123(2), but that claims 5 and 8 did.
In this blog, we will concentrate on Art 123(2) for claim 1 as granted.
As AR 1B did not contravene Art 123(2), the board remitted for further prosecution.
Claim 1 as granted – The proprietor’s point of view on Art 123(2)
The original claims were all directed to a method for operating a medical system. The claims of the patent are directed to a medical system.
The proprietor argued that claim 2 of the original application provided a basis for claim 1 of the patent.
Claim 1 as granted – The opponent’s point of view on Art 123(2)
The opponent argued that the mere fact that a method claim and a system claim did not provide the same scope of protection, the scope a method claim being smaller than that of a system claim, showed that the original method claims could not serve as basis for the system claims of the patent.
The opponent objected to the first and second of the plurality of implantable medical devices being leadless cardiac pacemakers (LCPs).
The opponent also objected to the definition, in claim 1 of the patent, that an anti-tachycardia response is provided via the first LCP, since LCPs were originally described more narrowly, as providing anti-tachycardia pacing therapy (ATP).
The opponent further objected to the definition of the first LCP as being configured to carry out the actions (a) and (b), see below, i.e. provide the anti-tachycardia response via one or more of its electrodes, and communicate a message to at least the second LCP.
According to the opponent, the formulation in original claim 1 was broader than that of claim 1 of the patent. The former did not require the first medical device itself to be configured to carry out the method steps, but only that it be involved. The steps themselves could, for instance, be triggered by an external device or a user.
Claim 1 as granted – The board’s decision on Art 123(2)
For the board, the scope of protection is not the same as content.
A claim that defines a method might well, for example, set out a system in terms of all its essential features, while only defining a method of using, or operating, such a system.
Such is the present case, as original claim 1 defined a method of operating a medical system that the skilled person would have understood to comprise a plurality of implantable medical devices, through the operation of which the method steps were carried out.
The method defined in original claim 1 comprised the steps of
- (a) providing an anti-tachycardia response via one or more electrodes of a first one of a plurality of implantable medical devices and
- (b) communicating a message from the first one of the plurality of implantable devices to at least a second one of the plurality of implantable medical devices before and/or while providing the anti-tachycardia response.
The opponent’s objection to the first and second of the plurality of implantable medical devices being leadless cardiac pacemakers (LCPs) overlooked the fact that this possibility was among the alternatives in original claim 2.
For the board, original claim 2 provides sufficient basis for a claim defining a medical system comprising a plurality of implantable medical devices; including a first and a second LCP, through the operation of which the method steps originally defined in claim 1 can be carried out.
Given that original claim 1 already employed the broader term anti-tachycardia response, original claim 2 did not restrict that definition.
Additionally, while some parts of the original description indeed described LCPs as providing ATP, the description did not limit the type of tachycardia therapy provided by LCPs to ATP.
The skilled person would, then, have understood the broad term employed in the original claims to be part of the invention.
For the board, claim 1 of the patent does not require that the first LCP be configured to carry out the method steps autonomously. It also encompasses the possibility that the first LCP acts under the instruction of an external device or a user, as long as it is configured to act as defined.
In fact, for the method steps defined in original claim 2, i.e. the steps of (a) providing an anti-tachycardia response via one or more of electrodes of the first LCP and (b) communicating a message from the first to the second LCP) to be carried out, the first LCP would also need to be configured so to act, whatever the trigger signal might be.
Therefore, contrary the OD’s view, the inclusion of “configured to” in the claim wording did not limit the system set out in original claim 2 in the way the opponent suggested.
Therefore, the grounds under Art 100(c) against claim 1 of the patent do not prejudice its maintenance.
Comments
In the present decision, there is an important comment: scope of protection is not the same as content.
In T 426/89, the board held that a “Method of operating a pacemaker for stopping tachycardia” was a non-patentable medical method, then under Art 52(4) EPC 1973, now Art53(c).
The board did however allow a change of category from “Method of operating a pacemaker for stopping tachycardia”, to “Pacemaker” as it considered that the granted claim was a actually a claim, which in functional terms referred to structural features of a pacemaker.
The situation is thus similar to the present one, were it was allowed to go from a method claim to a device claim.
It will be interesting to see in how far those two decisions fit in the present discussion of G 1/24.
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