T 1635/09 (Zusammensetzung für Empfängnisverhütung/BAYER SCHERING PHARMA AG) of 27.10.2010
- European Case Law Identifier
- ECLI:EP:BA:2010:T163509.20101027
- Date of decision
- 27 October 2010
- Case number
- T 1635/09
- Petition for review of
- -
- Application number
- 95905574.0
- IPC class
- A61K 31/57
- Language of proceedings
- German
- Distribution
- Published in the EPO's Official Journal (A)
- Download
- Decision in German
- Other decisions for this case
- -
- Abstracts for this decision
- -
- Application title
- Zusammensetzung für die Empfängnisverhütung umfassend ein Estrogen und ein Gestagen
- Applicant name
- Bayer Schering Pharma Aktiengesellschaft
- Opponent name
- STRAGEN PHARMA SA
Laboratorios Léon Farma, S.A.
Sandoz AG
Helm AG - Board
- 3.3.02
- Headnote
- -
- Relevant legal provisions
- European Patent Convention Art 123(3)European Patent Convention Art 53(c)European Patent Convention Art 64(2)European Patent Convention Art 83European Patent Convention Art 84
- Keywords
- Main request, auxiliary requests 1, 4, 5, 7, 8, 11, 12, 14, 15, 18, 19, 21, 22: therapeutic method (yes): prevention or reduction of pathological side-effects
Auxiliary requests 2, 3, 6, 9, 10, 13: sufficient disclosure (no): invention cannot be carried out over the entire scope claimed; undue burden
Auxiliary requests 16, 17, 20: sufficient disclosure (no): undue burden
Auxiliary request 23: extension of protection (yes): conversion of use claim into Swiss-type' claim
Auxiliary request 24: extension of protection (yes): conversion of use claim into purpose-related product claim - Catchword
- I. Use as an oral contraceptive of a composition in which the claimed concentrations of the hormone content are selected at such a low level as to prevent or reduce the likely pathological side-effects of such an oral contraceptive is a therapeutic method excluded from patentability under Article 53(c) EPC.
II. Since the question whether or not a claimed use is therapeutic can be determined only in the light of the activities carried out and/or the effects achieved in the course of that use, the exclusion from patentability under Article 53(c) EPC of a therapeutic use in which a non-therapeutic use in the form of a contraceptive is inseparably associated with a therapeutic use in the form of the prevention or reduction of pathological side-effects cannot be removed by limiting the claim to a "non-therapeutic use".
III. The conversion of a claim for the use of a substance or composition for a specific purpose into a Swiss-type claim or a purpose-related product claim within the meaning of Article 54(5) EPC results in an extension of protection.
IV. In assessing the reasonableness of any series of tests needed to reproduce an invention, account must also be taken of their avoidability. Time-consuming and ethically questionable tests are unreasonable if the claimed invention could have been defined, without any limitation of its scope, by features which would have rendered such series of tests superfluous for the purpose of reproducibility by the skilled person.
Order
For these reasons it is decided that:
1. The contested decision is set aside.
2. The patent is revoked.