T 0059/87 (Friction reducing additive/MOBIL II) of 26.04.1988

European Case Law Identifier: ECLI:EP:BA:1988:T005987.19880426
Date of decision: 26 April 1988
Case number: T 0059/87
Petition for review of: -
Application number: 81300717.6
IPC class: C10M 1/54
Language of proceedings: English
Distribution: Published in the EPO's Official Journal (A)
Download: Decision in English
OJ versions: German
English
French
Other decisions for this case: T 0059/87 Friction reducing additives/MOBIL IV 1990-08-14 T 0059/87 Reibungsverringernde Zusätze/MOBIL IV 1990-08-14 T 0059/87 Additifs réduisant le frottement/MOBIL IV 1990-08-14 T 0059/87 Friction reducing additives/MOBIL IV 1990-08-14
Abstracts for this decision: -
Application title: Friction reduction additives and compositions thereof
Applicant name: Mobil Oil Corporation
Opponent name: Chevron
Board: 3.3.01
Headnote: -
Relevant legal provisions: European Patent Convention Art 112 1973 European Patent Convention Art 123 1973 European Patent Convention Art 54 1973 European Patent Convention Art 64 1973 European Patent Convention Art 91 1973
Keywords: Novelty
Selection
Amendment
Catchword: -
Cited cases: -
Citing cases: T 1016/92 T 0254/93 T 0279/93 T 0892/94 T 1073/96 T 0579/01 T 0589/01 T 0411/02 T 1085/02 T 0406/06 T 1865/07 T 1898/07 T 0511/09 T 1047/12 T 2090/15 T 1338/18 T 3272/19 T 1504/21

ORDER

For these reasons, it is decided that:

The following questions concerning important points of law shall be referred to the Enlarged Board of Appeal for decision:

(i) When amended claims involving a change of category (here: from a "compound" claim to "use of that compound in a composition for specified purpose") are proposed in opposition proceedings, what considerations should be taken into account when deciding on the admissibility of such amendments having regard to Article 123(3) EPC? In particular, how far should the national laws of Contracting States relating to infringement be considered?

(ii) Can a patent with claims directed to a "compound" and to a "composition including such compound" be amended during opposition proceedings so that the claims are directed to the "use of that compound in a composition" for a particular purpose?

(iii) Is a claim to the use of a compound for a particular non-medical purpose novel for the purpose of Article 54 EPC, having regard to a prior publication which discloses the use of that compound for a different non-medical purpose, so that the only novel feature in the claim is the purpose for which the compound is used? The Registrar: The Chairman: