Zusammenfassung von EPC2000 Art 87(1) für die Entscheidung T1303/18 vom 21.11.2022

See also abstract under Article 13(1) RPBA 2020. T 1303/18 was an appeal against the opposition division's decision to revoke the patent. The patent had been granted with an earliest priority date of 28 November 2007 claimed from D49. The respondents (opponents) objected to the validity of this earliest priority. Citing G 2/98, they contended that the subject-matter of claim 1 as granted was not directly and unambiguously disclosed in D49. The appellant (patent proprietor) argued that the claims as granted and the whole disclosure of D49 concerned the same invention within the meaning of Art. 87(1) and G 2/98, namely, polymorphic form II of rotigotine. Thus, the earliest priority date was valid. The board applied G 2/98 and concluded that the polymorphic form defined in claim 1 as granted was not directly and unambiguously disclosed in D49. Thus, the subject-matter of claim 1 as granted did not enjoy the claimed earliest priority date of 28 November 2007. The earliest priority date was therefore not valid. According to the board, the fact that the same characterisation methods were used to describe the disclosed compound in both the patent and D49 played no role when assessing identity of the invention under G 2/98. The fact that the same figures resulted from that characterisation in the patent and D49 was also irrelevant. What was decisive was whether, using common general knowledge, a compound as defined in claim 1 of the patent was directly and unambiguously disclosed in D49 as a whole. In this respect, the board recalled that the disclosure as the basis for the right to priority under Art. 87(1) EPC and as the basis for amendments in an application under Art. 123(2) EPC had to be interpreted in the same way (see G 1/03 and G 2/10). The board noted that in claim 1 as granted, the claimed compound was said to be polymorphic form II of rotigotine and was defined by at least one of four properties, namely properties a) to d). A comparison of the definition in terms of property a) given in claim 1 as granted with the disclosures in D49 revealed certain differences. In light of those differences, at least two selections were needed within D49 to arrive at the claimed compound as defined by property a). However, D49 contained no pointer towards those specific selections. Moreover, the error margin in property a) had been broadened as compared with the error margin in D49 and no disclosure of this broadening could be found in D49. In the board's opinion the skilled person, at the relevant date of the subsequent filing, would not have derived the compound as defined by property a) in claim 1 as granted directly and unambiguously, using common general knowledge, from the disclosure in D49. Similar conclusions were drawn for the other three properties. Thus, the definition given for the compound referred to in granted claim 1 differed in numerous aspects from that disclosed in D49. It could therefore not be concluded that the compound of granted claim 1 was the same as that disclosed in D49. The appellant submitted that only form I and form II of rotigotine were known at the earliest priority date and form II was clearly distinguished from form I. Stating that the priority from D49 was not valid amounted to insinuating that a third polymorphic form of rotigotine existed but this was clearly wrong. The board, however, concurred with the respondents that by accepting this argument, the earliest priority would become retroactively invalid if another crystal form of rotigotine was discovered later, which would fall under the definition given in claim 1 as granted but not under the disclosure of D49. Hence, this argument ran against the principle of legal certainty and had to fail. The board was not convinced by the appellant's argument that structural properties allegedly lacking in D49 were implicitly disclosed to the skilled person since they were inherent to polymorphic form II and accessible by using the disclosed analytical methods. According to the board, priority had been claimed from a written disclosure (D49) and it was from this disclosure that the skilled person should have been able, at the relevant date, to derive directly and unambiguously, using common general knowledge, the subject-matter of claim 1 as granted. However, as set out above, D49 did not disclose the same compound as that defined in claim 1 as granted. The board also disagreed with the appellant's submission that the respondents bore the burden of proving that claim 1 as granted defined a compound different from the one disclosed in D49. No evidence in this respect had been presented. According to the board, it was the appellant (patent proprietor) who introduced various differences between the compound defined in granted claim 1 and that disclosed in D49. If, despite these differences, the appellant asserted that the compound of granted claim 1 was the same as that disclosed in D49, it was the appellant who bore the burden of proving this. In fact, it was for an applicant to ensure, where priority from a previous application was claimed, that the same invention was defined, according to the required standard, in the subsequent application as filed.