Tools and Pitfalls Recent Decisions from the EPO Boards of Appeal 20 November 2014

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1 Tools and Pitfalls Recent Decisions from the EPO Boards of Appeal 20 November 2014 Presented by: Leythem A. Wall

2 Overview Acceleration of Appeal Proceedings Double Patenting Admissibility of Appeals Added Matter Sufficiency Inventive Step AOB

3 Advantage Belgium - T0895/13, T1125/13 (3.3.04) OJ EPO 1/2014, 63 appeal might be accelerated where infringement proceedings have been brought or are envisaged Opponent based in Belgium Belgian courts take prima facie validity approach, even if appealed patent was revoked in EPO opposition Appellant (patent proprietor) previously applied for Belgian preliminary injunction in another case Based on Belgian court practice + history of appellant, EPO appeal proceedings accelerated The BoA states this is not a precedent, but relies on these particular facts

4 Triple Patenting No express provision in EPC precluding double patenting Guidelines G-IV, 5.4 for double patenting refusal Guidelines C-IX, 1.6 parent and divisional applications may not claim the same subject matter The difference between the claimed subject matter must be clearly distinguishable T1780/12 (3.3.04) & T1570/09 (3.3.02) & T0879/12 (3.3.08) 2 nd medical use claims (product) and Swiss claims (process) are not same subject matter - not double patenting T1766/13 & T1765/13 (3.3.05) product, use of product and method of fabricating are not same subject matter - not double patenting

5 Admit It - T2532/11 (3.3.05) Patent revoked in EPO Opposition. All appeal requests different (further limited) and obviate OD Decision No reference to impugned decision + explanation as to why this decision should be wrong and set aside Question of whether newly filed requests can be seen as implicit grounds of appeal i.e. is there a link between the decision and grounds? Yes, but is it sufficiently linked? No, needs to be a contestation of the Decision The amendments in order to remove the grounds of the decision under appeal constitute an implicit acceptance of the decision and therefore cannot be regarded as grounds for appeal under Art.108 EPC Appeal rejected as inadmissible

6 Admit It - T0935/12 (3.3.03) Patent revoked in EPO opposition for insufficiency with respect to features originally in granted claim 7 but incorporated into claim 1 All appeal requests deleted feature of granted claim 7 from claim 1 and had new limitations Opponent argued that grounds of appeal did not explain why contested decision was wrong. Appellant should not be allowed to put forward a fresh case BoA noted that requests ultimately pursued in opposition hearing all included granted claim 7 feature. No indication why appeal Requests without claim 7 were not maintained before the OD New features in Requests require new assessment Appeal requests inadmissible

7 Rearranged Matter - T0287/11 (3.3.10) Claim 1 as granted: "An aerosol hair styling composition comprising: (a) from 5% to 90% by weight of a water-soluble polyalkylene glycol that is substantially free of polyalkylene glyceryl ethers, except if the composition comprises a silicone or silicone derivative, and that has a number average molecular weight of from 190 to 1500 and from 5 to 35 repeating alkylene oxide radicals wherein each of the repeating alkylene oxide radicals has from 2 to 6 carbon atoms, or triglycerin or PPG-4; (b) from 1% to 90% by weight of a liquid carrier; and (c) from 5% to 40% by weight of a propellant. Claim 1 of Main Request limits water-soluble glycol to formula: Contravened Article 123(3) EPC, patent revoked

8 Rearranged Matter - T0287/11 (3.3.10) Main Request in appeal differs from granted claim 1 by: wherein the water-soluble polyalkylene glycol conforms to the formula: wherein A is selected from the group consisting of methyl or hydrogen or mixture thereof and wherein R is selected from the group consisting of H, methyl, and mixtures thereof, and wherein n has an average value of from 5 to 35" Still contravenes Article 123(3) EPC

9 Rearranged Matter - T0287/11 (3.3.10) Auxiliary Request I in appeal differs from granted claim 1 by: wherein the water-soluble polyalkylene glycol conforms to the formula: wherein A is selected from the group consisting of methyl or hydrogen or mixture thereof and wherein R is selected from the group consisting of H, methyl, and mixtures thereof, and wherein n has an average value of from 5 to 35" and: "wherein the total amount of water-soluble polyalkylene glycol that is substantially free of polyalkylene glyceryl ethers and that has a number average molecular weight of from 190 to 1500 and from 5 to 35 repeating alkylene oxide radicals wherein each of the repeating alkylene oxide radicals has from 2 to 6 carbon atoms, or triglycerin or PPG-4 is in the range of 5% to 90% by weight Article 123(3) EPC satisfied

10 Rearranged Matter - T0287/11 (3.3.10) GRANTED CLAIM 1 MAIN REQUEST 1 st AUXILIARY REQUEST An aerosol hair styling composition comprising: (a) from 5% to 90% by weight of a water-soluble polyalkylene glycol that is substantially free of polyalkylene glyceryl ethers, except if the composition comprises a silicone or silicone derivative, and that has a number average molecular weight of from 190 to 1500 and from 5 to 35 repeating alkylene oxide radicals wherein each of the repeating alkylene oxide radicals has from 2 to 6 carbon atoms, or triglycerin or PPG-4; (b) from 1% to 90% by weight of a liquid carrier; and (c) from 5% to 40% by weight of a propellant. An aerosol hair styling composition comprising: (a) from 5% to 90% by weight of a water-soluble polyalkylene glycol that is substantially free of polyalkylene glyceryl ethers, except if the composition comprises a silicone or silicone derivative, and that has a number average molecular weight of from 190 to 1500 and from 5 to 35 repeating alkylene oxide radicals wherein each of the repeating alkylene oxide radicals has from 2 to 6 carbon atoms, or triglycerin or PPG-4; (b) from 1% to 90% by weight of a liquid carrier; and (c) from 5% to 40% by weight of a propellant. An aerosol hair styling composition comprising: (a) from 5% to 90% by weight of a water-soluble polyalkylene glycol that is substantially free of polyalkylene glyceryl ethers, except if the composition comprises a silicone or silicone derivative, and that has a number average molecular weight of from 190 to 1500 and from 5 to 35 repeating alkylene oxide radicals wherein each of the repeating alkylene oxide radicals has from 2 to 6 carbon atoms, or triglycerin or PPG-4; (b) from 1% to 90% by weight of a liquid carrier; and (c) from 5% to 40% by weight of a propellant. wherein the water-soluble polyalkylene glycol conforms to the formula: wherein the water-soluble polyalkylene glycol conforms to the formula: wherein A is selected from the group consisting of methyl or hydrogen or mixture thereof and wherein R is selected from the group consisting of H, methyl, and mixtures thereof, and wherein n has an average value of from 5 to 35; wherein A is selected from the group consisting of methyl or hydrogen or mixture thereof and wherein R is selected from the group consisting of H, methyl, and mixtures thereof, and wherein n has an average value of from 5 to 35; wherein the total amount of water-soluble polyalkylene glycol that is substantially free of polyalkylene glyceryl ethers and that has a number average molecular weight of from 190 to 1500 and from 5 to 35 repeating alkylene oxide radicals wherein each of the repeating alkylene oxide radicals has from 2 to 6 carbon atoms, or triglycerin or PPG-4 is in the range of 5% to 90% by weight.

11 Setting An Example T1616/09 (3.3.02) Rule 42(1)(e) EPC the description shall describe in detail at least one way of carrying out the invention claimed, using examples where appropriate Claims to pharmaceutical composition, 2 nd medical use, kit No examples including results data. No evidence of improved or synergistic effect. Refused because insufficient BoA disagreed, issue of inventive step not sufficiency For claims to pharmaceutical compositions or kits it is in principle sufficient that the application provides information which allows the skilled person to produce the composition or kit, and that there are no substantiated doubts that it could be used in therapy

12 Setting an Example T1616/09 (3.3.02) For second-medical-use claims it is required that the composition itself is disclosed in an enabling way but also that its suitability for the claimed treatment is plausibly disclosed in the application In the case of a claim directed to a pharmaceutical composition comprising two classes of compounds which have both already been used in therapy in the prior art, there is a priori no reason to doubt that such a pharmaceutical composition can be produced; no specific functional effect has to be demonstrated In the case of second-medical-use claims, if the claimed therapeutic effect was already known to the skilled person at the priority date, it is not necessary to demonstrate it in the application

13 Inventive Polymorphs T1422/12 (3.3.10) T0777/08 (3.3.01) concluded that crystalline version of amorphous compound is not inventive in absence of an unexpected technical effect. Improvements of crystalline vs amorphous generally known ( - improved filterability and drying) Crystalline version of tigecycline antibiotic Closest prior art is amorphous tigecycline Objective technical problem is provision of more stable tigecycline w.r.t. epimerisation resulting in improved biological activity prior art general teaches crystalline more stable than amorphous, but concerns polymers and inorganic glasses prior art teaching not considered transferrable to tetracycline antibiotics, let alone specific problem of epimerisation thereof Crystalline tigecycline is inventive

14 Extras T1142/12 (3.3.03) refusal to change venue for Oral Proceedings is not appealable or referable to Enlarged BoA T2317/13 (3.3.04) grounds of appeal fax transmission began 23:58 (final day) but completed 00:16. Full statement admissible and no requirement for re-establishment of rights T0280/11 (3.2.01) 685 Requests considered (454 filed 3 days before hearing, 3 during), but 686th Request too much!

15 QUESTIONS?

16 Thank you Leythem Wall is a chartered UK patent attorney, a European patent attorney and a European trademark and design attorney. His practice involves patent drafting, prosecution, opinions on infringement and validity, and portfolio management. He has extensive experience in Oppositions and Appeals including representation in Oral Proceedings before the EPO. Finnegan Europe LLP 16 Old Bailey London EC4M 7EG United Kingdom Tel +44 (0) leythem.wall@finnegan.com

17 Disclaimer These materials have been prepared solely for educational and entertainment purposes to contribute to the understanding of U.S. and European intellectual property law. These materials reflect only the personal views of the authors and are not individualized legal advice. It is understood that each case is fact specific, and that the appropriate solution in any case will vary. Therefore, these materials may or may not be relevant to any particular situation. Thus, the authors, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP (including Finnegan Europe LLP, and Fei Han Foreign Legal Affairs Law Firm) cannot be bound either philosophically or as representatives of their various present and future clients to the comments expressed in these materials. The presentation of these materials does not establish any form of attorney-client relationship with these authors. While every attempt was made to ensure that these materials are accurate, errors or omissions may be contained therein, for which any liability is disclaimed.