T 0342/02 (End-labeled nucleotide probe/ENZO) 09-06-2005

Admissibility of the new main request into the proceedings - Article 114(2) EPC

1. A patent proprietor is supposed to submit new claim requests at the outset of appeal proceedings. This ensures that proceedings can be conducted efficiently and that the other parties are not taken by surprise by a fresh case which they cannot properly deal with. Requests filed at later stages of the proceedings may be admitted, however, the more complex the issues raised by the amendments are and the later in the proceedings they are filed, the greater is the risk that those requests are not admitted.

2. In the present case an amended main request was filed by the appellant one month before the oral proceedings. It must thus be regarded as filed late. The amendments are intended to remove the reason for refusal before the Opposition Division, a disclaimer. No attempt was made by the respondent to challenge the admissibility of this request. A final decision on this issue was not necessary because at the beginning of the oral proceedings - at an even later stage of the proceedings - a new main request was filed by the appellant. The wording of the claims of this request does not differ to a great extent from the wording of the previous main request. The appellant submitted that the amendments were mainly made to prevent further objections by the respondent. The respondent indeed said at the oral proceedings that due to some of the amendments parts of his pleading became obsolete. Thus, the amendments expedited the proceedings. Moreover, as can be seen from the observations below, none of the amendments gives rise to further objections. Hence, the board decides to admit main request into the proceedings.

Abandonment of subject-matter at grant

3. The respondent argues that in claim 1 the insertion of the term "detection" between "non-radioactive" and "moiety" is not allowable because the deliberately chosen deletion of the term "detection" from granted claim 1 and the description would bar the appellant from re-introducing this term in proceedings after grant and thereby from reinstating subject-matter which he had surrendered.

4. It is noted that there is no provision in the European Patent Convention precluding the introduction in a patent of terms which are present in the application documents as originally filed, but not in the patent. Article 123(2) EPC stipulates that "a European patent application or a European patent may not be amended in such a way that it contains subject-matter which extends beyond the content of the application as filed." (emphasis added). Thus, the reservoir from which a patent proprietor can scoop for amendments in a patent is the patent application as originally filed and not the patent specification.

Scope of protection - Article 123(3) EPC

5. In the context of the argumentation on abandoned subject-matter the respondent submits that by re- introduction of the term "detection" in claim 1 of the main request subject-matter having been omitted in granted claim 1 is now re-introduced with the consequence that the subject-matter of this claim is broader than the subject-matter of granted claim 1, amounting to a violation of the requirement of Article 123(3) EPC.

6. However, there is no broadening. Firstly, in the board's view, the explicit mentioning of the term "detection" does not change the subject-matter of the claim at all. Rather, this feature is considered to have been implicitly present in granted claim 1, by way of interpretation in the light of the description and drawings disclosing nothing else than the use of the claimed compounds for detection in hybridization assays.

7. Secondly, if granted claim 1 is read in isolation, the expression "non-radioactive moiety" may be regarded as extending to all sorts of non-radioactive moieties, i.e. even to those not suited for "detection". However, since claim 1 of the present main request is expressly restricted to "non-radioactive detection moieties", its subject-matter is narrower and not broader compared to claim 1 as granted.

8. Hence it is concluded that the respondent's argument against the introduction of the term "detection" fails, firstly, because there is no legal basis for not allowing the re-introduction of terms not present in the claims as granted, but in the application documents as originally filed, and secondly, because, in the present case, by the inclusion of the term "detection" in the claims, the requirements of Article 123(3) EPC are not contravened.

9. In comparison to claim 1 as granted, claim 1 of the main request is moreover limited to one specific, indirectly attached non-radioactive detection moiety. Independent claim 8 has been restricted in the same manner as claim 1. Independent claim 13 is restricted to biotin-11-dUMP as non-radioactive detection moiety and avidin or streptavidin as preformed detectable molecular complex. Hence the overall scope of protection is not extended by the amendments. The requirements of Article 123(3) EPC are fulfilled.

Amendments - Article 123(2) EPC

10. Claim 1 of the present main request differs from claim 1 of the main request before the Opposition Division, i.e. claim 1 as granted, by the following amendments possibly relevant to Article 123(2) EPC:

(i) insertion of the term "detection" between "non- radioactive" and "moiety" and (ii) limitation of the indirectly attached non-radioactive detection moieties to biotin-11-dUMP.

11. Basis for the amendment mentioned in item (i) above are the complete application documents as originally filed which relate exclusively to the use of the claimed compounds as detection probes in nucleic acid hybridization assays. The specific wording of the claim is found on page 4: "...the present invention provides a novel compound comprising an oligo- or polynucleotide having at least one biotin or other non- radioactive detection moiety directly or indirectly attached to each of the 5' and 3' end nucleotides ..." (emphasis added).

12. The amendment mentioned in item (ii) is based on a combination of the wording of claims 1, 4 and 5 as originally filed (see section II above).

13. The respondent's argument that a combination of claims 1, 4 and 5 cannot be regarded as providing an unambiguous basis for the amendment because a selection has to be made from several alternatives covered by these claims is not convincing because each of the alternatives, among them the one now claimed, is clearly derivable from the combination of the three claims.

Since claims 1, 4 and 5 in combination provide a basis for the amendment, the relevance of the absence of a worked example need not be discussed in detail.

14. The following further amendments were introduced in claims other than claim 1 and have the following basis in the application documents as originally filed.

The expression in claims 3 and 5 "two to five of biotin or biotin analogues are attached" is supported by a combination of claims 1 and 2.

The amendment in Claim 10 is supported by claim 9 as filed.

The expression in claim 11 "...wherein the detectable molecule is selected from a fluorochrome, chromogen or enzyme." has a basis in claim 9 as filed.

Claim 13 is based on claims 1, 4, 5 and 9 as filed.

In claims 1, 8 and 13 the expression "or biotin-11- allylamine-dUMP" is deleted. This amendment is allowed pursuant to Rule 88 EPC because, as submitted by the appellant during oral proceedings, the term remaining in the claim "biotin-11-dUMP" and the deleted term "biotin-11-allylamine-dUMP" are synonymous.

15. Consequently, all amendments are in agreement with the requirements of Article 123(2) EPC.

16. The decision to revoke the contested patent was solely based on Article 123(2) EPC. As the Opposition Division did not decide on the other grounds of opposition, the board decides pursuant to Article 111 EPC to remit the case to the Opposition Division for further prosecution on the basis of claims 1 to 14 of the Main Request.