Generally speaking the application relates to injection pens to be used by diabetic patients without requiring the help of medically qualified persons.
Claims 1-11 as granted relate to an assembly for drug delivery and claim 12 as granted relates to a drug delivery device comprising the assembly of at least one of the previous claims. There is no more definition of the drug delivery device in the claims.
Brief outline of the procedure
In the description as filed, the passage bridging pages 10 and 11 read as follows:
The “aspects” actually related to details of the drug delivery device which was only very broadly defined in claim 12.
In the communication under R 71(3) the ED deleted the claim-like clauses in the text intended for grant.
For the ED, those claim-like clauses were not allowable under Guidelines F-IV, 4.4
Moreover such clauses do not comply with R 42, given that they do not belong in the description, as explained in decision T 490/90 points 5 and 6.
The applicant did not agree with the text proposed for grant as it was of utmost importance for it to keep the claim-like clauses for post grant national procedures.
The application was refused under Art 84, since “the MR and the AR1 and 2 comprise claim-like clauses on pages 10a to 12, which are different from the set of claims.
The applicant appealed the refusal.
In appeal AR4 was made the MR and the board found this request allowable.
Since the request was considered allowable, OP were cancelled, and the decision taken in written proceedings.
The board’s position on claim-like clauses
In its communication pursuant Art 15(1) RPBA20, the board indicated that the claim-like clauses in the description of the MR, and AR1 to 3 were not consistent with the claims which led to the claims being not supported by the description pursuant to Art 84, second sentence.
The original MR when entering appeal read as follows:
AR1 when entering appeal reads as follows:
AR2 when entering appeal reads as follows:
AR3 when entering appeal reads as follows:
AR4 when entering appeal, later the MR reads as follows:
The board held that pages 11 and 12 of the description of the new MR refer to “aspects” to which “the present disclosure may further relate“. In the application as filed (see pages 11 and 12), the “aspects” are numbered 1 to 7.
As compared to the application as filed, pages 11 and 12 are amended such as to include the features of aspects 2 and 3 (option i), and of aspect 4 (option ii)) to aspect 1.
The remaining “aspects” 5 to 7 have been merely renumbered as aspects 2 to 4.
This request was deemed allowable by the board.
It is actually possible to consider that claim 12 as granted lacks clarity as the drug delivery device can have any form provided it contains the claimed assembly. It should thus not have been granted.
The board made clear that claim-like clauses, like in the MR and AR1, were not consistent with the claims.
There is nothing much to say but to approve.
It is abundantly clear that the claim-like clauses in the MR and AR 1-3 are not allowable. They are as such unclear and cannot be said to support the claims.
When thinking about the reason why the applicant in the present case was keen to add claim-like clauses in the description, one possibility which comes to mind is that he actually wanted to save claims fees. The thrust of the claims 1-11 was in the assembly and not in the drug delivery device which was barely defined in claim 12 as explained above.
It is manifest that selling a drug delivery device, i.e. a pen with or without insulin, brings more money than just an assembly for an insulin pen. It was thus clear why the applicant wanted to be able to possibly claim some protection for the pen as such. Adding proper claims to the pen after claiming the assembly for the pen would have been the better solution.
It is another interesting use of claim-like clauses, which I never came across even when this type of devices were dealt with in a previous directorate of mine.
In my opinion it could have been possible to still refuse the application under Art 84, second sentence, support of the claims. After all, the applicant wants protection for something he is not prepared to cover with claims and rather “hides” some “aspects” in the description.
Should this use of claim-like clauses for saving on claim fees increases, I am not sure that the EPO will remain silent. After all, those claim-like clauses create more work without proper retribution. This was actually the reason d’être for introducing claims fees.