5. Ascertaining differences
Overview
5. Ascertaining differences
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Once the state of the art has been established, using the criteria described above, and its content has been determined, the final step is to ascertain whether the invention in question differs from the prior art.
- T 2117/17
a) Besonders strenge Bedingungen sind an ein verspätetes Vorbringen einer offenkundigen Vorbenutzung geknüpft, insbesondere dann, wenn die Vorbenutzung durch die Verfahrensbeteiligten selbst erfolgt sein soll. Gerade in einem solchen Fall wäre von der Einsprechenden zu erwarten gewesen, Informationen über die eigenen Produkte schon vor der Einspruchsabteilung vorzubringen, um eine Zurückverweisung zu vermeiden (Punkt 4.2.8).
b) Obwohl zwar die Verfahrensschritte als solche in einem Vorrichtungsanspruch nicht unmittelbar Teil des Schutzumfangs sind, versteht die Fachperson aber, dass die Vorrichtung dazu eingerichtet sein muss, die Verfahrensschritte auszuführen (Punkt 5.2.3).
- T 32/17
The deposit of a hybridoma under Rule 31 EPC for compliance with the disclosure requirement of Article 83 EPC does not in itself convey any technical information about the molecular structure of the monoclonal antibody produced by said hybridoma, such as its amino acid sequence (see points 5 to 17 of the Reasons).
- Case law 2021
- Case law 2020
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Case T 1930/14 concerned a method for the purification of antibodies. The opposition division inter alia held that the subject-matter of claim 1 of the main request lacked novelty. The appellant (patent proprietor) argued that claim 1 was only for methods in which the separation of monomeric antibodies from aggregates was achieved by the weak CM cation-exchange step. He further argued that the claim should be construed according to the principles set out in T 1931/14. In the appellant's view, the purpose stated in the claim, i.e. "purifying a monoclonal antibody from aggregates thereof" defined the claimed method's application or use (as opposed to its effect). In line with decision T 1931/14, this purpose had to be considered as a functional technical feature of the claim, i.e. it represented a limitation of the process. The board considered that the finding in T 1931/14 "where the stated purpose defines the specific application of the method, in fact it requires certain additional steps which are not implied by or inherent in the other remaining steps defined in the claim, and without which the claimed process would not achieve the stated purpose" (point 2.2.4 of the Reasons) could only hold in cases where it was unambiguously clear that the purpose implied such steps and where it was also unambiguously clear what those steps in fact were. In T 1930/14, the board could identify no indication, either in the claim itself or in the description, that would lead the skilled person to understand that the stated purpose "for purifying a monoclonal antibody from aggregates thereof" implied that the claimed method contained additional steps. The claimed method did not contain any implicit additional steps by virtue of its purpose. Thus, contrary to the appellant's view, there were no steps, allegedly implied by the purpose, that served to differentiate the claimed method from that disclosed in document D1. Claim 1 did not meet the requirements of Art. 54 EPC.
- Case law 2019
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The board in T 1931/14 decided that in the context of a method it is important to differentiate between different types of stated purpose, namely those that define the application or use of a method, and those that define an effect arising from the steps of the method. Where the stated purpose defines the specific application of the method, in fact it requires certain additional steps which are not implicit in the remaining features, and without which the claimed process would not achieve the stated purpose. On the other hand, where the purpose merely states a technical effect which inevitably arises when carrying out the other remaining steps of the claimed method and is thus inherent in those steps, such a technical effect has no limiting effect because it is not suitable for distinguishing the claimed method from a known one.