August 2024 Board of Appeal Decision T 1057/22
In a recent decision, the EPO’s Boards of Appeal have confirmed the importance of filing data to support arguments relating to sufficiency of disclosure in EPO opposition proceedings. The patent concerned related to a mixture of fish oil and fruit juice which was alleged to have anticancer properties. The opponent argued the constituents required to achieve the anticancer effect were not sufficiently disclosed, but failed to provide enough data to convince the Board of Appeal. Hence, the Board was satisfied the claimed composition was sufficiently disclosed and ordered that the patent be maintained in amended form.
Background
European patent no. EP 2 991 507 B1 was granted with claims directed to a mixture containing fish oil and fruit juice for use in the treatment of cancer. At opposition, the patent was found to lack novelty and the amendments proposed by the patent proprietor found to lack sufficient disclosure, leading to the patent being revoked.
The proprietor appealed this decision, proposing to limit its patent to the treatment of pancreatic and neurological cancers to overcome the novelty and sufficiency issues raised at first instance. The European Patent Office’s Board of Appeal was immediately satisfied that this resolved the novelty issue, leaving only the need to consider sufficiency of disclosure.
The Opponent’s Arguments
The opponent argued that the proprietor’s proposed amendments would not render the claims of the patent sufficiently disclosed.
Specifically, the opponent argued that the mixture of fish oil and juice exemplified in the patent included a variety of fruit juices, and thus failed to teach the skilled person which juice contributed to the mixture’s anticancer effect.
The opponent also argued that one of the mixtures tested in the patent included various bioactive agents other than fish oil and fruit juice, and that any of those other bioactive agents could have been responsible for the anticancer properties of the mixture, rather than the fish oil / fruit juice combination.
Taken together, the opponent argued, there were serious doubts that the invention could be carried out across the whole scope of the claim.
The Board’s Decision
The Board of Appeal, however, was not satisfied by the opponent’s arguments.
Firstly, the Board noted the patent disclosed a list of preferred juices which were all said to be suitable for the mixture because these all contain high levels of antioxidants thought to contribute to the anticancer properties of the mixture. The Board also noted the opponent had failed to provide any data showing that a mixture of fish oil and any one of these juices did not have the desired anticancer effect.
Secondly, the Board noted there were fish oil / juice mixtures disclosed in the patent which did not contain any other constituents but which were shown to have anticancer properties. Thus, the Board held it was credible that the anticancer properties of the mixture were provided by the combination of fish oil and fruit juice alone.
Accordingly, the Board held that the amended claims proposed by the patent proprietor were sufficiently disclosed, and thus ordered that the patent be maintained on the basis of those claims.
Conclusions
This decision highlights the importance of including data to support sufficiency arguments made during EPO opposition proceedings.
As the patent proprietor, it is important to ensure enough data is included in the patent application to render it credible that a purported therapeutic effect is achieved by the invention, whilst opponents should obtain data disproving a therapeutic effect if they wish to oppose a patent on the ground of insufficient disclosure.
The attorneys here at Schlich are well versed in defending our clients’ patents and opposing the patents of our clients’ competitors during EPO opposition proceedings. Thus, if you need help with an EPO opposition in which data is at issue, we would be happy to assist.
