EP 3 021 691 B1 relates to methods and systems for incorporating nicotine into oral products, e.g. a nicotine containing chewing gum.
Brief outline of the case
The OD decided revocation of the patent for lack of N of claim 1 as granted over D3, and AR1-3 infringed Art 123(2).
The proprietor appealed.
The board decided that N over D3 was given and remitted for further prosecution.
The claim at stake
A method for forming an oral product,….., wherein the cellulosic fibre ……. comprises fibres selected from the group consisting of wood pulp, cotton, sugar beets, bran, citrus pulp fibre, grass fibres, Salix, tea, Populus, bamboo fibres, and combinations thereof.
The question to be answered is whether microcrystalline cellulose (MCC), which is disclosed in example 1 of D3 falls within the scope of claim 1.
Paragraph [0013] of the description
In Paragraph [0013] of the description the following is to read:
For example, cellulosic fibres can be selected from the following: sugar beet fibre, wood pulp fibre, cotton fibre, bran fibre, citrus pulp fibre, grass fibre, willow fibre, poplar fibre, and combinations thereof.
Cellulosic fibre used in the methods, systems, and oral products provided herein may be chemically treated prior to use. For example, cellulosic fibre used in the methods, systems, and oral products provided herein can be CMC, HPMC, HPC, MCC, or other treated cellulosic material.
The proprietor’s point of view
The expression “consisting of” in claim 1 should leave no doubts as to the scope of the limitation of the nine enumerated cellulosic fibres and combinations thereof.
MCC is a different material from any of the enumerated cellulosic fibres and was not one of the nine enumerated fibres that were used in the claimed method as defined in claim 1.
Paragraph [0013] simply stated another possible embodiment of the disclosure which was not part of the claimed invention as defined in claim 1 of the patent as granted.
The proprietor noted that this paragraph enhanced their argument that MCC was a different material which was not claimed. MCC could have been easily included in claim 1 if wanted.
The opponent’s point of view
The opponent argued that the subject-matter of claim 1 was not novel over D3 as example 1 of D3 disclosed the nicotine in the gum being prepared by sorbing liquid nicotine onto microcrystalline cellulose (MCC).
The patent disclosed that the cellulose used in the alleged invention could be processed to be in the form of e.g. MCC, see [0013]. Thus, the cellulose used in example 1 of D3 was the same as that defined in claim 1, and was used in the same way as defined in claim 1.
The opponent further argued that the expression “consisting of” in claim 1 only categorized the group of potential fibres. This is terminology used in US patent law. “Cellulosic fibre” merely comprised fibres of “wood pulp, cotton, sugar , etc.”. It did not consist of “wood pulp, cotton, sugar , etc.”.
The board’s decision
The Board noted first that claim 1 was clear and that there was no contradiction between the subject-matter of claim 1 and paragraph [0013] of the patent.
Claim 1 defines the cellulosic fibres comprising fibres selected from an exhaustive list of materials and combination thereof. The expression “consisting of” limits the materials to the ones listed in the claim and their combinations.
Paragraph [0013] of the patent discloses cellulosic fibres used in the methods for forming an oral product.
The first list of examples provided in paragraph [0013] encompass cellulosic fibres disclosed in claim 1.
The second list of examples, which concerns the chemically treated cellulosic fibres has not been claimed.
The first list of cellulosic fibres is distinct from the second list of chemically treated cellulosic fibres.
For the board, the subject-matter of claim 1 does thus not encompass MCC and the subject-matter of claim 1 is not anticipated by example 1 of D3.
Comments
The board is right in stating that MCC is not part of the substances claimed.
The claim might be clear, but reasonable doubts are permitted as to whether the claim is properly supported by the description.
The problem is indeed to be seen in the lack of adaptation of the description before grant.
Paragraph [0013] discloses indeed two types of cellulose fibres, those stated in claim 1 and chemically treated cellulosic fibres.
When the patent was granted, it should have been made clear that the second group of cellulose fibres were not claimed. This could have avoided a lack of N as ground of opposition.
In spite of what might have been said in T 56/21, support of the claims by the description requires adaptation of the description and clarification of what falls under the claim.
From the two options, one is not claimed. This should have been clarified.
D3 was CPA in examination and claim 1 as granted corresponds to the claim filed when entering the regional phase.
In reaction to this claim, the ED considered that this claim was lacking IS over D3 as it considered that the “selection of the specific cellulose fibre source can only be considered inventive if it presents unexpected effects or properties in the relation to the rest of the cellulose fibre sources”. The ED requested comparative tests to this effect.
In view of the position of the ED, it is surprising that it did not request the adaptation of the description before grant.
In view of the way the examination was conducted and the information found therein, the position of the OD is difficult to follow. The opponent must have been very persuasive, but for the wrong reasons. No member of the ED appeared in the OD.
Comments
9 replies on “T 1770/22 – Not everything disclosed need to be claimed, but then the description needs to be adapted”
Daniel, I could spend time reading the full text of the Decision and the EPO file in full but it strikes me as a better use of my time and yours instead to ask you a question, as follows:
Consider a product that contains and is characterized by at least one of the fibres in the closed list within claim 1. Consider that it also contains a minor amount of other fibres not in the claim 1 list. I see from claim 1 that the claimed product “comprises” fibres in the closed list. To me that suggests that you only infringe if you use fibres of the closed list BUT, (because of the open language of “comprises”), if you top up that compulsory mix with a minor amount of other fibres, you will still infringe. Do you see it like that, or otherwise?
Turning to para 0013, then, I find that it confirms my assessment of claim 1. So why then must para 13, for conformity with Art 84 EPC, be amended to deleted?
Indeed the claim is not limited to fibres of the claim 1 list. It requires such fibres to be present but does not exclude other fibres.
To Max Drei and the glorious Anonymous,
§ [0013] discloses two classes of fibres.
The first class is represented by the closed list having ended in claim 1.
The second class is represented by CMC, HPMC, HPC, MCC, or other treated cellulosic material.
In claim 1 only the first class of fibres has been retained, and the second class of fibres does not fall under the terms of the claim.
If MMC is considered not falling under the ambit of claim 1, which is the decision of the board, then it should have been made clear in the description before grant that the second class of fibres do not represent the invention. This has not been done.
I agree that the claim merely “comprises” fibres from the closed list, and by merely adding for instance MCC you will still infringe.
The problem is that the wording “comprises” has been left next to a closed list of fibres. This should also nave been queried during examination.
If examination would have been carried out properly, we would not have come to a situation in which the opponent could have claimed that the MMC of D3 was novelty destroying for claim 1.
Both not carried out amendments boil down to a non-conformity with Art 84, clarity and support, which cannot be discussed in opposition in view of G 3/14, and T 447/22, commented in this blog.
If the patent is maintained as granted, then no amendment of the description can be carried out as it would not answer a ground of opposition.
If the patent is maintained in amended form, then an amendment of the description should nevertheless be carried out so that MMC and alikes do not fall under the ambit of claim 1 as decided by the board.
Max Drei’s question is also interesting in view of G 1/24, as it shows that Interpretation in infringement can be different than in examination/opposition were only the validity is at stake. .
It confirms me in my position that Art 69 and the protocol should not be used in procedures before the EPO.
The protocol not at all, and Art 69 only when it comes to assess Art 123(3).
Wait and see what will be the outcome of G 1/24.
The EPO management’s justification for the requirement of adapting the description to the claims is « legal certainty » in the interpretation of the claims by the courts under Art 69. But the position of the UPC, by far the leading European court in terms of the volume of cases, is to use the description of the original application, not the description of the patent as granted, to interpret the claims : see CD Paris 307/2023 Njoy v UMR of 29 Nov 2024 (B.I.31), CD Paris 316/2023 of 17 jan 2025 Njoy v Juuls (para 8.9), LD Paris 358/2023 of 13 Nov 2024 HP v Lama (para 41), LD Düsseldorf 355/2023 of 28 Jan 2025 Fuji v Kodak (III. AR 2 para 1). What is then the point of description amendments if they are not taken into account for interpretation by the court ?
This position is entirely logical when claim interpretation is applied in the context of validity assessment i.e. for revocation actions or for counterclaims in infringement actions, since the critical date for validity assessment is the filing or priority date.
I have noted though that in the Fuji v Kodak case, the UPC LD Düsseldorf has used the description of the patent as granted for the assessment of compliance with Art 123(3) (see p. 42, 45, 53).
Thanks FH. For the purposes of 123/3 what else can a court reasonably do, other than to compare with what was granted . For 123)2, what else can a court do, other than to compare with the original disclosure? It is about time that the EBA decides what, in Art 84 EPC, the word “support” means.
Dear Max Drei,
There was a good opportunity for the EBA to decide on how Art 84, support, should be seen.
I refer here to T 56/21 in which the board had announced a referral on this point. The board has preferred to take a further isolated decision, actually pre-empting G 1/24, in order to come to the isolated conclusion, that the description does not need to be adapted.
I cannot see the president talking the initiative of a referral on this matter as adaptation of the description is standard practice, enshrined in the Guidelines and the EPC, cf. Art 84, support.
Adaptation of the description is also required by the boards when remitting with the order to grant or maintain when the adaptation of the description has not taken place before a board.
Mr Hagel,
The decisions of the UPC you quote were all taken by either a LD or Sections of the CD of the CFI. They are thus not final and cannot be considered representative of the UPC’s position.
I just remind you that in the Hanshow case, the LD Munich interpreted the claim in view of its amendments carried out during examination. The CoA UPC put an end on it. LD have also decided that they are competent for Irland, but there as well the CoA UPC has put an end to it. The LD Mannheim has even considered that it is competent for the UK. Wait and see what the CoA UPC will say.
The UPC, like any other national court, is free to interpret claims as they think fit. There is nothing to say about this, but for the same token, the EPO is also free to interpret claims as it thinks fit. The UPC cannot impose its views to the EPO, as well as the EPO cannot impose its views on the UPC.
The EPC and the UPCA have two distinct aims: granting valid patents on the one side, and deciding on infringement on the other side. In case of a claim or a counter claim for revocation, the UPC, like any national court is free to decide and interpret the claims as it thinks fit.
For instance, the German Federal Court claims to follow the case law of the EPO. However, decisions of the BGH when it comes to added matter in granted European patents, is quite different. The BGH has devised ways to avoid revocation, but those have not been endorsed by the BA EPO. We can come to a similar situation with the UPC.
As the EPO is not competent to decide upon validity, once the opposition period has lapsed, or once a final decision in opposition has been taken by a board, it is for the national courts and/or the UPC to enter the game.
You seem to willingly forget that Art 84 is not applicable to post grant procedures as it is not a ground of opposition and invalidity. Art 84 is of no avail to national courts or the UPC. G 3/14 is a decision of the EBA and not from a national court or of the UPC. No national court or the UPC is required to endorse it.
Whether you like it or not, Art 84 has two prongs, clarity and support. As long as Art 84 is what it presently is, it is the EPO’s duty, that before grant, those two prongs are taken care for. When features are not claimed, or are considered optional in the original description, but limit an independent claim, the EPO has no choice, but to request the adaptation of the description.
You seem also to forget that the effective date of a claim can either be a priority date, should a priority be validly claimed. or otherwise the filing date. A claim infringing Art 123(2) has no effective date.
As Max Drei pointed at in his comment, when assessing Art 123(2), the reference is the application as filed, and when Art 123(3) is assessed, the granted patent matters. This does not bring us forward in matters of Art 84, support.
I still have not seen one decision of a national court or of the UPC of a European patent being revoked under Art 123(2) because of the adaptation of the description. It happened once, in the UK for the UK part of a European patent. If the description is correctly adapted, there should not be any added matter creeping in.
Thanks, chaps, for the exchanges.
As you observe, Daniel, I might have to wait a long time before the EBA tells me whether the second prong of Art 84 can ever be satisfied when even though the allowed claims are both fully enabled by the description and satisfactorily “clear” in themselves, Applicant cannot find an amendment to the desrciption which in the eyes of the EPO both i) conforms the description and ii) is devoid of added matter.
Dear Max Drei,
It is certainly necessary in order to get a grant that the claims are both fully enabled by the description and satisfactorily “clear” in themselves. However, Art 84, support, is also a condition for obtaining grant.
This is the more so, since Art 84 should, in principle, not play any role in post grant procedures.
For the EPO, G 3/14 limits the application of Art 84 in opposition. As far as Art 84, clarity, is concerned, I can fully agree. As far as Art 84, support, is concerned, I have reservations, as in G 3/14 the thrust was on clarity and not on support.
The odd decision, T 447/22, cf. Catchword 2, commented in my blog, claiming that G 3/14 does apply to Art 84, support, does not weigh much against all the decisions of remittal ordering the OD to adapt the description when the board has decided the wording of the claims to be maintained.
What national courts or the UPC do, is beyond reach for the EPO, so any comment is superfluous.
May be in an obiter dictum, the EBA might give some ideas how it sees it.
On the one hand, the president has brought this topic in his comments, and on the other hand, T 56/21 has pre-empted G 1/24.