T 1913/21 (Preventing trisulfide bonds/BIOGEN) du 17.10.2024

Novelty - (no)
Category of granted claims
Second non-medical indication (no)
Auxiliary requests admissibly raised in opposition proceedings (no)
Referral to the Enlarged Board of Appeal - (no)

1. The rationale of the Enlarged Board of Appeal's decisions
G 2/88 and G 6/88 is limited to claims directed to (new) non-medical uses of a known compound for a particular purpose, rather than to processes for production within the meaning of Article 64(2) EPC. In order to be a limiting technical feature of the claim, the (new) purpose must relate to the use rather than to a property of the product (see Reasons 15).
2. Claims which when correctly construed are directed to processes resulting in products referred to in Article 64(2) EPC are not subject to the special treatment established under G 2/88 and G 6/88, even if they contain the word "use" (see Reasons 9).
3. Where an invention relates to a new technical effect of a physical entity that can only occur as part of a process for the production or manufacture of a product, such that it is inextricably linked to and cannot occur in isolation from the production process, a claim directed to the "use" of the physical entity to achieve that effect must be regarded as directed to the production process per se (see Reasons 23).
4. For the criteria to be used in deciding whether auxiliary requests were admissibly raised in opposition proceedings, in the sense of Article 12(4) RPBA, see Reasons 38 to 52.