T2471/17

17.06.2022


The European patent No. 2 322 153 was granted with a set of 11 claims. Claim 1 as granted reads as follows:
1. A compound that inhibits hypoxia inducible factor (HIF) hydroxylase activity for use in treating or preventing iron deficiency in a subject, wherein the compound is a structural mimetic of 2-oxoglutarate.
 Three notices of opposition were filed. The patent was maintained in an amended form. Claim 1 deemed allowable by the opposition division reads as follows:
1. A compound that inhibits hypoxia inducible factor (HIF) prolyl hydroxylase activity for use in increasing serum iron in treating iron deficiency in a subject, wherein the compound is a structural mimetic of 2-oxoglutarate.
All opponents appealed, requesting the revocation of the patent.
The patent proprietor (respondent) requested that the appeals be dismissed and presented 29 sets of claims as auxiliary requests 1 to 29. Claim 1 of auxiliary request 1 reads as follows:
1. A compound that inhibits hypoxia inducible factor (HIF) prolyl hydroxylase activity for use in treating iron deficiency in a subject, wherein the compound is a structural mimetic of 2-oxoglutarate.
Opponents 2 and 3 withdrew their oppositions. Opponent 1 remained as the sole appellant.
Amendments - main request (Article 123(2) EPC)
The application as filed refers to several alternative classes of compounds described in different ways by functional or structural features.
The different descriptions of compounds by their structural or functional properties are juxtaposed in the application as filed, but the relationship and potential overlap between these definitions is not fully explained, nor is it self-explanatory in most instances. It is not possible to conclude that the compound classes and functionalities are synonymous or can be freely combined.
In particular, no specific disclosure of a class of compounds defined as structural mimetics of 2-oxoglutarate that inhibit HIF prolyl hydroxylase can be derived from the description.
The subject-matter of claim 1 of the main request extends beyond the content of the application as filed (Article 123(2) EPC).
Admittance, principle of prohibition of reformatio in peius - auxiliary request 1
As established by Enlarged Board of Appeal Decision G 4/93, if the opponent is the sole appellant against an interlocutory decision maintaining a patent in amended form, the patent proprietor is primarily restricted on appeal to defending the claims held allowable by the opposition division.
If these claims are not allowable, the principle of prohibition of reformatio in peius applies, i.e. an amended claim which would put the opponent and sole appellant in a worse situation than if it had not appealed must be rejected.
The scope of claim 1 of auxiliary request 1 is broader than that of claim 1 of the main request held allowable by the opposition division due to the deletion of the limiting feature "increasing serum iron".
For this reason, auxiliary request 1 runs counter to the principle of prohibition of reformatio in peius. To decide on its admissibility, it must be established whether compelling reasons exist for departing from this principle.
In G 1/99, the Enlarged Board of Appeal considered it equitable, under certain circumstances, to deviate from the prohibition of reformatio in peius to give the patent proprietor the opportunity to mitigate the effects of an error of judgement made by the opposition division that would have the revocation of the patent as a direct consequence. The error of judgement of the opposition division dealt with in G 1/99 was to allow an amendment which had the effect of limiting the scope of the claims that was objected to in appeal.
In G 1/99 the Enlarged Board recognises that it is primarily the patent proprietor that is responsible for its claims and bears the risk when submitting amended claims as its main request. In such a situation, the patent proprietor is aware that if the opposition division allows its main request, it will lose the right to file an appeal (because the opposition division's decision does not adversely affect it).
G 1/99 cannot be understood as meaning that this risk is simply removed in just any situation where the opposition division decided in favour of the patent proprietor but the board subsequently disagrees with this assessment.
Rather, the exception to the prohibition of reformatio in peius must be based on a new situation in the appeal proceedings, which must be causal for the board's divergent opinion.
This condition is not met in the case at issue. The objection under Article 123(2) and 76(1) EPC that the features of claim 1 were not specifically disclosed in combination in the application and in the parent application as filed (including the combination of increasing serum iron with the remaining features) was already an issue in the proceedings before the opposition division. So were further objections under, inter alia, Articles 123(3), 84 and 83 EPC.
The respondent did not show, and it was not established, that new reasons against claim 1 of the main request, on account of the feature "increasing serum iron", arose on appeal which would have caused the revocation of the patent.
For these reasons, the circumstances of this case do not justify an exception to the prohibition of reformatio in peius, and auxiliary request 1 must be rejected.
Other auxialiary requests are also rejected for the same reasons.
The patent is revoked.

 


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