T 0166/84 (Postponement of examination) 22-08-1984
Postponement of examination
Enlarged Board of Appeal/suspension of examination
Suspension of examination/Enlarged Board of Appeal
Suspension of examination/point of law pending before Enlarged BApp
I. European patent application 81 301 663.1 filed on 15 April 1981 and published on 28 October 1981 with publication number 38 674 claiming the priority of the prior application of 21 April 1980 (JP-53127/80), was refused by the decison of the Examining Division of the European Patent Office dated 19 January 1984. The decision was based on claims 1 to 13 filed on 19 November 1983. The main claim was worded as follows:
"1. Use of a compound of the formula:
wherein R is methyl or methoxy, or two R's taken together represent -CH=CH-CH=CH-; and n is an integer of 4 to 22, for the treatment of a mammal suffering from allergic disease due to slow reacting substance of anaphylaxis."
II. The reason given for the refusal was that claims 1 to 9 relate to a method of treatment of a mammal, and as such these claims are not susceptible to industrial application under Article 52(4) EPC and therefore not patentable. The decision also referred to the "Nimodipin/BAYER" case (T 17/81, OJ 7/1983, 266-267), wherein the matter of the use of chemical substance for therapeutic purposes had been submitted to the Enlarged Board of Appeal.
III. On 13 March 1984 the applicant lodged an appeal against the decision of 19 January 1984 and submitted the Statement of Grounds within the prescribed time. It is requested by the applicant that the consideration of the allowability of use claims should be postponed until a decision has been given by the Enlarged Board of Appeal in the Nimodipin case.
1. The appeal complies with Articles 106 to 108 and Rule 64 EPC and is, therefore, admissible.
2. The matter of "use claims in therapy" had already been under consideration by the Enlarged Board of Appeal (EBA) when the decision of the Examining Division refusing the application fell in the case of the present application. It is the opinion of the Board that, whenever a decision of the Examining Division depends entirely on the outcome of proceedings before the EBA on a legal question or point of law raised according to Article 112 EPC - and this is known to the Examining Division - the further examination of the application must be suspended until the matter is decided by the EBA. The refusal of the application was therefore inappropriate and the appeal fee must be refunded in view of a substantial procedural violation according to Rule 67 EPC.
For these reasons, It is decided that:
1. The Decision of the Examining Division of the European Patent Office dated 19 January 1984 is set aside.
2. The application is remitted to the Examining Division in order to await the decision of the Enlarged Board of Appeal in the question of use claims in therapy and then to continue the substantive examination accordingly.
3. The appeal fee is reimbursed.