Key points
- This case provides a refresher of the holding of G 2/88: "A claim to the use of a known compound for a particular purpose, which is based on a technical effect which is described in the patent, should be interpreted as including that technical effect as a functional technical feature, and is accordingly not open to objection under Article 54(1) EPC provided that such technical feature has not previously been made available to the public."
- Claim 14 is directed to: " Use of a compound [boric acid] for stabilizing a soil-release polymer comprising ester moieties in the presence of a lipase"
- Claim 12 is directed to a method. Board 3.3.06 deals with the novelty of both claims together. " to decide whether the subject-matter of claims 12 and 14 is novel or not, it is necessary to establish which specific limitations result from the method/use features, and to subsequently assess whether such limitations are explicitly or implicitly anticipated by the cited prior art"
- " The stabilising effect is explained in the description of the patent, which indicates (par. [0007] and [0008]) that the invention is based on the surprising finding that said substance stabilises the soil-release polymer in the presence of lipase, an effect which appears to be associated with the inhibition of lipase in the presence of the proposed substance. "
- D9 discloses in an example "a composition including a lipase, a soil-release polymer and boric acid"
- "[In use claim 14] the purpose of stabilising the soil-release polymer simply requires adding a substance as defined in that claim to a composition including lipase and solid-release polymer."
- The Board then applies G2/88, though not the headnote but r.7.1: "this issue is explicitly addressed in decision G 2/88 (see reasons 7.1 and 7.2), which indicates that when a known entity is used for a new purpose, the question to be asked is what the actual technical features of the claim are (i.e. which specific features are associated with the new purpose). Only if it can be concluded that the use involves "new means of realisation" in the form of technical steps which are not disclosed in the prior art, can the claim be considered to be novel."
- The Enlarged Board in G2/88 r.7.1: " In the Enlarged Board's view, the distinction drawn by the [opponent] is a fundamental one, and can be developed as follows. In relation to a claim to a use of a known entity for a new purpose, the question initially arises: what are the technical features of the claim? If the claim includes as a technical feature a "new means of realisation ation" by which the new purpose is achieved, in the form of steps of a physical activity, which are not disclosed in the state of the art in association with the known entity, then the claim is clearly novel because of the presence of that technical feature."
- In the above paragraph, the EBA first deals with the easy case. The EBA then turns to the more difficult cases.
- The EBA in G2/88" In relation to a claim to a use of a known entity for a new purpose, the initial question is again: what are the technical features of the claimed invention? If the new purpose is achieved by a "means of realisation" which is already within the state of the art in association with the known entity, and if the only technical features in the claim are the (known) entity in association with the (old) means of realisation, then the claim includes no novel technical feature [and the claim is not novel]" (emphasis added)
- However, the Enlarged Board then continued in G2/88: "In relation to a claim whose wording clearly defines a new use of a known compound, depending upon its particular wording in the context of the remainder of the patent, the proper interpretation of the claim will normally be such that the attaining of a new technical effect which underlies the new use is a technical feature of the claimed invention ... Thus with such a claim, where a particular technical effect which underlies such use is described in the patent, having regard to the Protocol [on Art.69], the proper interpretation of the claim will require that a functional feature should be implied into the claim, as a technical feature; for example, that the compound actually achieves the particular effect."
- This leads to headnote 3 and r.10.3 of G2/88: "with respect to a claim to a new use of a known compound, such new use may reflect a newly discovered technical effect described in the patent. The attaining of such a technical effect should then be considered as a functional technical feature of the claim (e.g. the achievement in a particular context of that technical effect). If that technical feature has not been previously made available to the public by any of the means as set out in Article 54(2) EPC, then the claimed invention is novel, even though such technical effect may have inherently taken place in the course of carrying out what has previously been made available to the public."
- It is not clear to me why headnote 3 of G3/88 would not apply in the present case. It is also unclear to me why the TBA cites r.7.1 and 7.2 of G2/88 only and not r.10.3 of G2/88.
- To cite T59/87 of 14.08.1990: "in Decision G 2/88 it was emphasised in paragraph 10.1 that the question to be decided is what has been made available to the public, not what may have been inherent in what was made available to the public. Furthermore, as emphasised in paragraph 10, when considering how far the teaching in a written description also makes available to the public the inevitable result of carrying out such teaching, in each case "a line must be drawn between what is in fact made available and what remains hidden or otherwise has not been made available"."
EPO T 1840/19
The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.
source http://justpatentlaw.blogspot.com/2022/03/t-184019-non-novel-2nd-non-medical-use.html
