Zusammenfassung von EPC2000 Art 088(3) für die Entscheidung T0335/20 vom 29.09.2022

See also abstract under Article 56 EPC. In T 335/20, the appellant (opponent) relied on D9 in the context of inventive step. D9 was part of the state of the art as defined in Art. 54(2) EPC only in respect of subject- matter that was not entitled to the priority of P3. The appellant asserted that claim 1 was only entitled to partial priority from P3, while the respondents (patent proprietors) submitted that the entire subject-matter of claim 1 was entitled to the priority of P3. The board had to determine whether the subject-matter of claim 1 was entitled to the priority of P3. Claim 1 related to the medical use of "a PGRN polypeptide" in the treatment of frontotemporal dementia (FTD). The board construed the term "a PGRN polypeptide" in accordance with the definition provided in the patent and concluded that it did not denote a single specific PGRN polypeptide. Rather, it was a generic expression covering different PGRN polypeptides. Thus, claim 1, where directed to the use of a PGRN polypeptide, could be seen as a claim which encompassed "alternative subject-matter by virtue of one or more generic expressions or otherwise", i.e. a generic "OR" claim as referred to in G 1/15. The board noted that, in line with the principles set out in G 1/15, in assessing whether subject-matter within claim 1 may enjoy partial priority from P3, the subject- matter disclosed in P3 that was relevant, i.e. relevant in respect of prior art disclosed in the priority interval - in this case D9 - had to be determined. Disclosed subject- matter that was relevant in view of D9 was that relating to the use of a human PGRN polypeptide in the treatment of FTD. To the extent that P3 disclosed any such subject-matter falling within claim 1, claim 1 would be entitled to priority in respect of that subject-matter. According to the board, in the patent, the meaning of the human PGRN polypeptide included polypeptides having the amino acid sequence of SEQ ID NO:1 and other full-length polypeptides, whereas in P3 human PGRN polypeptide was explicitly limited to mean a polypeptide having the amino acid sequence of SEQ ID NO:2 (SEQ ID NO:1 in the patent). Therefore, the meaning of human PGRN polypeptide was broadened from P3 to the patent. Hence, claim 1 of auxiliary request 1 could conceptually be divided into two parts. The first part, claim 1A, corresponded to the invention disclosed directly and unambiguously in P3 and was limited, as regards the use of human PGRN polypeptides, to a human PGRN polypeptide having the amino acid sequence set forth in SEQ ID NO:1. The second part, claim 1B, was the rest of the subject-matter of the claim and, as regards the use of human PGRN polypeptides, embraced the human PGRN polypeptide set forth in GenBank GI number 4504151 and disclosed in document D32. Claim 1A was entitled to the priority of P3, while claim 1B was not. The patent proprietors did not dispute that the subject-matter of claim 1B was not entitled to priority from any other document. The board concluded that the effective date of claim 1B was the filing date of the patent, and that the disclosure of document D9 was part of the state of the art as defined in Art. 54(2) EPC in respect of the subject-matter of claim 1B.