Pure and Applied Organic Chemistry (PAOC) Annual meeting of epi (EPPC) delegation with EPO directors

R. Jorritsma chair of EPPC PAOC Subcommittee

The annual EPO-epi meetings serve to discuss problems and developments in the communication between representatives and first instance divisions of EPO in the fields of pure and applied organic chemistry, which include pharma and medical uses. Most or all of the PAOC directors participate in the meeting. Epi is represented by the PAOC group, which is a subcommittee of EPPC.

The next (5th) meeting will be held on 16th May 2017. epi members who have questions, suggestions or experiences related to (first instance) interaction with EPO in these chemical and medical fields that may deserve a discussion with the directors, are emphatically invited to pass on their comments to the epi secretariat or to the reporter (jorritsma@nlo.eu) before 31st March 2017.

As an illustration of the discussions between the EPO directors and the epi delegation, the topics discussed at the 4th meeting of EPO-epi PAOC meeting, held in Munich on 22nd June 2016 are summarised below. All of the topics were submitted by epi.

Substantive issues

  1. A Double patenting between parent and divisional
    On the question what "merely partly overlapping" in Guidelines 5.4 means as a condition for allowing double patents, especially in chemistry, it was concluded that a (any) difference in scope is sufficient for avoiding double patenting objection. For the rest, double patenting is a question of national law only. EPO agreed that the Guidelines are to be adapted in view of the practice.
  2. Novelty of selections from broader ranges of Markush Grouping
    The issue was the third criterion ("purposive selection") of the criteria for novelty of selections after T230/07 (Guidelines G.VI.8). According to the directors, the third criterion never comes up with Markush groups (groups of entities), whether individualised or not. For numerical ranges, it depends on the case. This is in line with the Guidelines. The examiners look at what is "individualised" to allow the selection or determine novelty. In A54.3 cases, the third criterion should not play a role at all.
  3. Non-therapeutic use
    It was agreed that a disclaimer such as "non-therapeutic" to overcome an Article 53(c) objection should be acceptable and should be the first approach. This may apply for instance when a distinction between purely nutritional or also therapeutic effects becomes relevant. T1635/09, which ruled otherwise, is followed only in very similar cases. EPO prefers to follow T74/93. Application with nutraceuticals is much broader, where regulatory authorities have not delimited a scope. In cosmetics the disclaimer should be used with active ingredients having a physiological function.
  4. Experimental support which is not in the priority document
    When claiming a second medical use, experimental support in the application as filed is typically required. Whether the invention is the same if the priority document does not have the support, i.e. whether priority right can be acknowledged, is basically a question of plausibility, to be decided case by case. Some industries now wait with filing product claims until they have sufficient data for medical use.
  5. Sufficiency vs. inventive step as a basis for support
    Whether defective support for a claimed (medical) effect is a matter of insufficiency (T609/02) or of lack of inventive step (T1329/04) depends on the case, e.g. whether there was a specific product. If the effect is in the claim, it would primarily be a matter of sufficiency. If only in the description, then it would typically be inventive step.
  6. Clarity examination at first instance after G3/14
    On the question whether and how G3/14 has influenced training programs and practice in examination G3/14, the directors responded that there has been no change in practice or training. The decision is clear for EPO. If a feature of a claim of one category is taken to a claim of another category, clarity is to be checked, also in opposition. epi stressed the importance of clarity examination before grant.

Opposition proceedings

  1. Convergent / divergent requests in opposition proceedings
    It was discussed whether convergence of requests as required in appeal proceedings is also to be followed in first instance proceedings. EPO feels that before the R 116 time limit, any request, even divergent, will have to be considered. It is up to the patentee or applicant to give his priorities. At oral proceedings, requests should be funnelling. A late request directed at a dependent claim should typically be acceptable, unless it would be a surprise. Mutual understanding between parties and office is important. EPO is specialising examiners for oppositions.
  2. Amendments under R80
    An inconsistency in the description only needs to be resolved if it affects the claims. A pre-existing inconsistency cannot be repaired. In a discussion about the need for amending the description at all, arguments in favour seemed to prevail, mainly for quality reasons. EPO takes note, for further study.
  3. Examination of all grounds of opposition at first instance so as to minimise remittals later on
    For EPO, this would generally be too much effort. If patentee wants it, he can manage his requests or propose a particular order of grounds. Practice is to deal first with the issue that is common to multiple requests. In cases where inventive step is the biggest problem, it should perhaps be the first to deal with, but this is not usually done. The Opposition Division should point at important issues in summons. This requires a strong chair to indicate preferred and efficient order at the beginning of hearing. The comments were said to be useful input for the office.

General Procedural matters

  1. Two oral proceedings on the same day for the same attorney of an association.
    The question was how to avoid rejection of a request for postponement of one of the two oral proceedings on the basis that a colleague would be equally prepared. What is relevant is who regularly signs letters. If that person requests postponement for one of the two hearings, the request would normally be allowed.
  2. PCT direct: noticed by examiner
    There have been a few problems in the beginning. If the PCT direct is clearly identified - which it normally is - it should go well.
  3. Announcement of cancelled proceedings in examination
    Cancelled proceedings should always be communicated. Silence of a party in general means oral proceedings are maintained.

It was concluded from both sides that the meeting was very useful again, and the open and cooperative atmosphere was appreciated. To be continued.