EP 3 547 992 B1 relates to mixtures comprising a phenyl alkanol and a linear alcohol with 8-12 carbon atoms.
Brief outline of the case
The patent was maintained according to a new MR=MRn.
The opponent appealed.
The opponent filed a late objection under Art 123(3) which was admitted by the board.
The board decided that the MRn was not in compliance with Art 123(2) and (3). and revoked the patent.
n AR7, the parentheses were reinstated, but AR7 was not admitted under Art 13(2) RPBA.
The patent was thus revoked.
It is all about features between parentheses.
Independent claim 1 as granted reads:
“1. A mixture comprising or consisting of
- at least one phenyl alkanol selected from the group consisting of 2-benzylheptanol (2-benzylheptan-1-ol), 2- methyl 5-phenylpentanol, dimethyl phenylbutanol (2-methyl-4-phenylbutan-2-ol), dimethyl phenylpropanol (2,2- dimethyl-3-phenylpropanol), 3-methyl-4-phenylbutan-2-ol (2-methyl-4-phenyl-2-butanol) or a mixture thereof,….
In claim 1 as maintained, there are no features between parentheses.
The proprietor’s point of view
The deletion of the features in parentheses in claim 1 did not contravene Art 123(2) under the gold standard; the compounds in parentheses did not contain additional information and the skilled person would have derived directly and unambiguously the subject-matter of claim 1 from the application as filed.
Two of the four compounds in parentheses did not correspond to the corresponding claimed compounds and the skilled person would have understood that the compounds were different.
Moreover, there was no new technical teaching or further technical restriction, and the requirements of R 43(7) with regard to the reference numbers should have been applied analogously.
The proprietor also referred to T 66/95.
The board’s decision
Non-compliance with Art 123(2)
The board held that deleting features in parentheses from claims can be allowed under Art 123(2) if the change is directly and unambiguously derivable from the original filing and does not add new subject matter.
In the present case, the parentheses were consistently used in the original description and claims in relation to the corresponding phenyl alkanols, namely in paragraphs [0015], [0020], [0023], [0024] and in claim 2 of the original application. The same parentheses were also present in the patent as granted in corresponding paragraphs [0015], [0020], ]0023], [0024] and in the granted claim 1.
The board considered that these parentheses were essential to the definition of the phenyl alkanol compounds, since they served to restrict a generic chemical definition covering multiple isomers to one specific isomer, i.e. an individual chemical compound.
In this regard, the board observed that the application as originally filed contains no indication that the chemical names in parentheses were merely illustrative examples of compounds encompassed by the corresponding generic chemical definition.
Accordingly, the content enclosed within the parentheses was not optional but constituted a limiting disclosure. Thus, the term “2-benzylheptanol (2-benzylheptan-1-ol)” must be interpreted as referring to 2-benzylheptan-1-ol, and the term “dimethyl phenyl propanol (2,2-dimethyl-3-phenylpropanol)” must be interpreted as referring to “2,2-dimethyl-3-phenylpropanol”.
The removal of the features in parentheses in claim 1 of the MR implies the possibility of covering other compounds not covered previously, therefore extending beyond the original subject-matter.
The reference made by the proprietor to R 43(7) EPC and decision T 66/85, is not relevant to the assessment of the present case and does not alter the board’s conclusions.
(a) R 43(7) relates to drawings including reference signs in parentheses relating to figures and were not considered limiting. In the present case, the parentheses enclose the name of specific chemical compounds, which cannot be treated as mere reference signs.
(b) In T 66/85, it was concluded that when a technical feature is deleted from a claim with the aim of no longer excluding certain embodiments from protection, the broadening of the claim does not contravene Article 123(2) EPC provided that the text of the originally filed application can serve as a basis for a claim not including that feature.
In the present case, the parentheses enclose the name of specific chemical compounds, which cannot be treated as mere reference signs. The situation is therefore different and the provisions of the rule are neither applicable to nor transposable to the present case.
Moreover, the features in parentheses were not added to make the claims easier to understand but represent technical features meant to limit the claim.
Non-compliance with Art 123(3)
The board held that the deletion of the terms “2,2-dimethyl-3-phenylpropanol” and “2-benzylheptan-1-ol” results in an extension of the scope of protection beyond that conferred by the patent as granted, since claim 1 now encompasses any 2-benzylheptanol and any dimethyl phenyl propanol whereas claim 1 as granted was limited to two specific isomers.
For these reasons, claim 1 of the MRn also violates the requirements of Article 123(3) EPC.
Comments
The present case reminds me of T 01481/05.
The originally filed claims comprised definitions in parentheses: pulse milk flow- suction phase. Following a clarity objection the applicant had deleted the definitions from the claims. This was considered infringing Art 123(2). Reinsertion of the definitions in the claims without parentheses was considered not infringing Art 123(3). In T 0148/05, the definitions were clearly limiting.
The present case and T 0148/05 remind of an important aspect: parentheses are reserved to reference signs relating to the drawings and should not contain any statement of technical nature having a effect on the definition of the matter for which protection is sought.
The reintroduction in a claim of features previously in parentheses, should lead to a limitation in order to be allowable.
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