T 0168/04 (Yeast vector/YOCUM) 08-09-2005

Procedural matter

1. The opponent withdrew its opposition in the course of appeal proceedings by a letter dated 9 December 2004. In accordance with the case law (e.g. T 789/89, OJ EPO 1994, 482), this withdrawal means that it ceased to be a party to the proceedings in respect of the substantive issues. The proceedings, nonetheless, continued on the basis of the patent proprietor's appeal. In accordance with the Enlarged Board of appeal decision G 9/92 (OJ EPO 1994, 875), if the patentee is the sole appellant against an interlocutory decision maintaining his patent in amended form, the maintenance of the patent as thus amended cannot be challenged.

2. The main request now on file is the request which was allowed by the opposition division (claims 1 to 7, see Section II, supra) with an additional claim (claim 8, see section IV, supra). In accordance with the above mentioned case law, the only substantive issue to be decided is whether the subject-matter of claim 8 fulfils the requirements of the EPC.

Main request filed on 8 April 2004; claim 8

Articles 123(2) and 76 EPC

3. The patent in suit was granted on the basis of a divisional application (No. 95 114 460.9, hereafter identified as "the application as filed") of the earlier patent application No. 85 303 625.9 (hereafter identified as "the parental application"). In accordance with Article 123(2) and 76(1) EPC, its subject-matter may not extend beyond the content of either of these applications. As these contents are, in fact, identical, it suffices to compare the subject- matter of claim 8 to that of, for example, the application as filed to assess whether or not the requirements of both these articles of the European Patent Convention are satisfied.

4. On page 2, lines 17 to 28 of the application as filed, the invention is described as follows:

"..., the invention features a vector including a gene for resistance to an antibiotic ... being transcribed from a yeast promoter sequence..., the vector being capable of being integrated into a chromosome of the host yeast cell... A gene heterologous to the host yeast cell ... can be inserted into the vector..."

On page 4, lines 30 to 35 : "Introduction of genes encoding heterologous enzymes into industrial yeast strains using the vectors of the invention will facilitate the production of such products as alcohol, which ordinarily relies on sugars to feed the yeast. An enzyme such as glucoamylase will enable the yeast to break down starch from inexpensive sources..."

On page 9, lines 14 to 16: "The vectors of the invention can be used in any useful process in which host yeast cells express a desired heterologous gene"

Finally, on page 14, lines 21 to 24, concerning the desired heterologous gene: "...the vectors of the invention can be used in processes in which the desired end product is the protein , e.g., therapeutic proteins such as interferon, encoded by the inserted heterologous gene.", and lines 30 to 34, concerning the promoter of the selective marker gene: "The promoter sequence ... can also vary widely, the only crucial factor being that the sequence provides a sufficient level of expression in yeasts cells is maintained."

5. In the board's judgment, the skilled person would have absolutely no doubt on the basis of this information that the vectors of the invention are to be used for the expression in yeast cells of heterologous proteins which will either contribute to the yeast cells' metabolism (e.g. glucoamylase) or be retrieved from the yeast cells for further purposes (e.g. interferon). The disclosure in the application as filed (and, accordingly in the parental application, see point 3, supra), thus, provides a sufficient basis for the subject-matter of claim 8.

6. A last remark may be made that the application as filed does not at any point suggest that the vectors should be used for protein production in any other hosts than yeast cells. Thus, no confusion can arise.

7. For these reasons, it is concluded that the requirements of Articles 123(2) and 76(1) EPC are fulfilled.

Other requirements of the EPC; claim 8

8. Whether the scope of a claim corresponding to pending claim 8 was commensurate to that of granted claim 10 was not decided by the opposition division, nor whether the requirements of novelty, inventive step and sufficiency of disclosure would be fulfilled by such a claim. Taking into account the age of the case, the board decides to exercise its power pursuant to Article 111(1) EPC to examine these issues in relation to claim 8.

9. The subject-matter of claim 8 has the same scope as that of granted claim 10, the reference to "a method according to claim 7 when dependent on claim 5" in said claim being equivalent to the reference to "a yeast cell according to Claim 9" in granted claim 10, - granted claim 9 being itself dependent on granted claim 7 which is identical to pending claim 5. The requirements of Article 123(3) EPC are fulfilled.

10. The method of claim 8 makes use of the transformed yeast cells of claim 5 obtained by using the method of claim 7, which claims were found novel and inventive, a finding which cannot be challenged. It follows that the claimed method also fulfils the requirements of Articles 54 and 56 EPC.

11. The opposition division also acknowledged sufficiency of disclosure in relation to the subject-matter of claims 1 to 7. The question which remains is, thus, whether an heterologous gene could have been cloned in the yeast vector and expressed in the yeast cells without undue burden. There is no evidence on file to the contrary. Furthermore, the patent in suit (page 5, Table 1, [0044]) provides the example of the heterologous E.coli lacZ gene being expressed in yeast cells transformed by the plasmid vector pRY255 and selected for resistance to G418. Sufficiency of disclosure is, thus, acknowledged in relation to the subject-matter of claim 8.

12. For these reasons, it is concluded that the main request filed on 8 April 2004 fulfils the requirements of the EPC.

Requests for reimbursement of the appeal fee and/or costs

13. The appellant's request for reimbursement of its appeal fee and/or its costs of filing the notice and grounds of appeal is based on an alleged substantial procedural violation - see paragraph VIII above. The board notes from the minutes of the oral proceedings before the opposition division that the facts alleged by the appellant are correct. That was beyond doubt a procedural irregularity: it was quite improper to tell a party he could take a certain step at a later stage in the proceedings and then, when that stage was reached, refuse to allow him to do so. In some circumstances, such fickle behaviour could very seriously prejudice a party and make a significant difference to the outcome of proceedings; in such cases, there would be little doubt that a substantial procedural violation had occurred.

14. In the present case however the board is satisfied that the outcome would not have been different. Any further request the appellant might have wanted to file but was not allowed to file would have contained a claim such as claim 8 of the request now allowed by the board and it is quite clear that the opposition division was firmly of the view that such a claim was not allowable. As is clear from paragraphs 3 to 7 above, that view was erroneous but such errors are not in themselves procedural violations - on the contrary, appeal proceedings exist to allow the correction of erroneous decisions. The appellant would, whether or not there had been any procedural violation, have been obliged to appeal in order to secure a claim such as claim 8. Therefore it would not be equitable to order reimbursement of the appeal fee under Rule 67 EPC.

15. The appellant makes an alternative request for costs. There can of course be no basis for ordering an apportionment of costs against the opponent under Article 104 EPC. Although despite withdrawing its opposition it remains a party for the purposes of costs (see T 789/89, supra, paragraph 1), the opponent bears no responsibility whatsoever for the matters of which the appellant complains. The board has no power to order any department of the EPO to pay all or part of the appellant's costs regardless of how deserving or otherwise a request for such costs might be (see T 315/03 of 6 July 2004, to be published in OJ EPO, Reasons, section 15).

16. The appellant's request, whether for reimbursement of its appeal fee or costs, must be refused.