T 0323/05 (Finasteride/MERCK) of 09.08.2007
- European Case Law Identifier
- ECLI:EP:BA:2007:T032305.20070809
- Date of decision
- 9 August 2007
- Case number
- T 0323/05
- Petition for review of
- -
- Application number
- 93203163.6
- IPC class
- C07J 73/00
- Language of proceedings
- English
- Distribution
- Distributed to board chairmen and members (B)
- Download
- Decision in English
- OJ versions
- No OJ links found
- Other decisions for this case
- -
- Abstracts for this decision
- -
- Application title
- A process for the production of finasteride
- Applicant name
- Merck & Co., Inc.
- Opponent name
- Gedeon Richter Ltd.
- Board
- 3.3.01
- Headnote
- -
- Relevant legal provisions
- European Patent Convention Art 100 1973European Patent Convention Art 101(2) 1973European Patent Convention Art 102(2) 1973European Patent Convention Art 69 1973European Patent Convention Art 84 1973European Patent Convention R 57a 1973European Patent Convention R 58 1973
- Keywords
- Adaptation of the description after a decision to maintain the patent in amended form - consistent with the amended set of claims (yes)
- Catchword
- Rule 57a EPC establishes a limit to the amendments which can be made to the patent in suit, namely the amendments must be occasioned by grounds of opposition specified in Article 100 EPC, even if the respective ground has not been invoked by the opponent.
Article 84 and Rule 57a EPC are the two provisions which must guide the Proprietor of the patent when he is invited by the Opposition Division to adapt the description. In other words, the amendments must be appropriate and necessary, and nothing more (see point 3 of the reasons).
ORDER
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The case is remitted to the first instance with the order to maintain the patent on the basis of the claims as ordered by the Board in its decision of 16 September 2003, page 2 of the description as maintained by the decision of the Opposition Division dated 27 January 2005 and page 3 of the description as in the main request filed on 4 July 2007.