EP 3 550 985 B1 relates to a nutritional composition for improving cells membranes in infants.
Brief outline of the case
The OD revoked the patent, as some requests were lacking N over D5=WO 2012/173485 or did not comply with Art 53(c).
The board confirmed the revocation
Claim 1 of the MR can be summarised as follows:
“A nutritional composition comprising lipid in the form of lipid globules, wherein….. for use in improving the fatty acid composition of cell membranes in a human subject, wherein the cell membranes are brain cell membranes,…”
The case is interesting as it deals with the possibility for an OD to interpret the claim independently of the interpretation of the claim by the parties.
The proprietor’s point of view
For the proprietor, the OD “embarked on an inappropriate examination as to the therapeutic use of claim 1″ and incorrectly decided that the improvement of the brain cell membranes was not therapeutic.
It further argued that the opponent had accepted that the use disclosed in claim 1 – namely improving the fatty acid composition of brain cell membranes – was directed to a therapeutic use.
Considering that both parties had agreed to such an interpretation, the OD had no power to examine of its own motion whether the claim was directed to therapeutic use.
With reference to T 223/95, Reasons 4, the proprietor also argued that post-grant opposition proceedings under the EPC were in principle contentious proceedings between parties normally representing opposite interests. The parties should be given equally fair treatment.
Thus, it was the responsibility of the opponent to present to the OD the facts, evidence and arguments in support of the grounds on which the opposition is based.
The appellant also referred to G 10/91, Reasons 6, and argued that the notice of opposition established the legal and factual framework within which the substantive examination of the opposition has to be conducted. In view of this, the OD should not conduct investigations on its own.
The opponent’s point of view
The opponent argued that the term “improving the fatty acid composition of cell membranes in a human subject” in claim 1 had several equally acceptable interpretations. This rendered the term “unclear to such an extent that it is unsuitable for distinguishing the claimed subject-matter from the prior art”.
The claim had to be construed “as a conventional product claim, since the use for “improving the fatty acid composition of cell membranes in a human subject” must be ignored“.
The opponent’s conclusion was that the subject-matter of claim 1 lacked N over D5.
The board’s decision
In view of the diverging views on the claim, the board held that the OD had good reason to examine the implication of the feature directed to the use when it construed the claim and examined the N of its subject-matter. The OD presented its view on the interpretation of claim 1 as early as in the annex to the summons. Claim interpretation was also discussed during the OP.
The board referred to T 583/23, Reasons 1.2, and reminded that claim interpretation being a question of law, it is – if decisive for the outcome of the case – always incumbent on the deciding body, even if none of the parties present any arguments.
The deciding body is not bound to follow the parties’ interpretation(s) when construing the claims, cf. T 450/20, Catchword and Reasons 3.4.3; cf. R 14/23, Reasons 7+8, Reasons 8.
Hence, even if the opponent had not argued in favour of construing claim 1 “as a conventional product claim”, the OD could have assessed – and probably would have had to assess – whether or not claim 1 is directed to a therapeutic use.
Therefore, nothing objectionable can be seen in the OD’s examination as to whether the claimed subject-matter was directed to a medical use.
On the contrary, under the circumstances of the case before it, the OD had every reason to construe the claim also with regard to whether it was directed to a therapeutic use. Moreover, the OD arrived at the correct conclusion.
Contrary to the proprietor’s view, the exercise carried out by the OD cannot be qualified as “re-doing” the examination. The OD, faced with the N objection presented by the opponent, had to construe the claim before assessing the objections.
For the board, it was plain to see that the situation in T 223/95 was different from the case in hand.
The board held that, assessing whether the requirements of Art 54(4) or (5) are met does not qualify as introducing a new ground of opposition different from the ground of opposition of lack of novelty.
The board added that, according to point 2 of the order in G 10/91, further grounds of opposition might be considered by he OD, if those seem to prejudice the maintenance of the European patent, i.e. grounds of opposition not referred to in the notice of opposition.
Comments
The decision is interesting as it puts an OD, as a deciding body, on a par with the boards.
As claim interpretation being a question of law, it is always incumbent on the deciding body to decide on the interpretation, even if none of the parties present any arguments. Furthermore, the deciding body is not bound to follow the parties’ interpretation(s) when construing the claims.
Interpreting a claim is not introducing a new ground of opposition it the interpretation is directly and unambiguously linked with a previously raised ground of opposition.
If OD’s and boards were limited to the interpretation given by the parties, they could not assume their role. For an OD its is to check whether grounds of opposition prejudice the maintenance of the patent. For a board, it is to judicially review the decision of the OD.
In has to be noted that an OD can introduce any new ground of opposition if it considers that it could prejudice the maintenance of the patent. With G 10/91, boards have to seek permission of the proprietor if they think of introducing a new ground of opposition.
On the procedure
D5 which lead to the lack of N had not only the same proprietor as the present patent, but also one inventor in common. It also shared one IPC class (A23L33/00).
It is thus quite surprising that this document was not found during the IS carried out by the EPO.
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