On 28 January 2025, the EPO’s Board of Appeal (BoA) issued Decision T 0070/23, which highlights the limitations of the conclusions of the recent Decision in G1/24.
Case Background
The Opposition
The appeal concerned European Patent Application No. 13792601.0 (European Patent No. 2903638), for which the applicant was GlaxoSmithKline Biologicals SA. The patent application related to immunogenic compositions comprising five conjugates, each of which was a capsular saccharide from a different serotype of the group B streptococcus (GBS) bacterium (Streptococcus agalactiae) conjugated to a carrier protein.
An opposition was filed against the granted patent by Pfizer Inc. on the grounds of added subject-matter, lack of sufficiency and lack of novelty and inventive step. In its preliminary opinion, the Opposition Division suggested that claims 16-17 lacked sufficiency. Following oral proceedings, the Opposition Division decided to maintain the patent in amended form based on a request in which claims 16-17 were deleted.
The Appeal
The opponent appealed the Decision, alleging that the Opposition Division was wrong to conclude that the claimed immunogenic composition represented an improvement compared to the compositions disclosed in prior art document D1. The appeal focused on the use of the term “immunogenic” in claim 1.
The respondent was of the view that the term "immunogenic" was a functional feature of the claimed subject-matter. They argued that, when read in conjunction with paragraph [0045] of the description, the term “immunogenic” clearly implied efficacy as a vaccine, so that each of the antigens present in the claimed composition was effective for both treatment or prevention of disease.
The appellant submitted that the immunogenic composition of the application was claimed as a product per se and that therapeutic efficacy was not a feature of the claimed subject-matter at all. At any rate, they argued that paragraph [0045] did not support the respondent’s case, since it did not even name a pathogen that the vaccine was supposed to protect against, let alone state that there was a protective response for all the serotypes of GBS present in the composition.
The Board of Appeal’s Decision
The Board agreed with the appellant that the claim was not drafted as a purpose-limited product under Article 54(5) EPC and so a therapeutic purpose or effect was not a feature of the claim. Further, it held that such a purpose or effect could not be considered inherent at least because the claim did not define amounts of its constituent parts or define the carrier proteins.
The Board also confirmed that, according to T 932/99 (see Reasons, 4.3.3) and T 1018/02 (see Reasons, 3.8), the description cannot be used to give a different meaning to features in a claim, which themselves impart a clear, credible technical teaching to the skilled reader and that no limitations derived from the description can be read into claims in order to avoid objections based on lack of novelty or inventive step. In any event, paragraph [0045] was held not to define all immunogenic compositions that fall within the ambit of the claim, which are not necessarily vaccines and that, even in relation to vaccines, it did not contain a clear statement of which pathogen the vaccine might protect against. Even if GBS was taken as the pathogen, there was no indication of which serotypes were protected against.
Therefore, whilst the claim composition was considered to remain immunogenic, technical effects such as improved immunogenicity were held to be neither a feature of the claim nor inherent in the composition as defined therein. The problem to be solved was therefore considered to be “the provision of a further immunogenic GBS composition”, which was held to be arbitrary and therefore not inventive.
As a result, the patent was revoked.
Practical Implications for Patent Practice
Compatibility with G1/24
G1/24 recently provided some much-needed clarity on the question of claim interpretation, going some way to resolving the long-standing legal uncertainty on the matter caused by a fundamental divergence in EPO case law that had persisted for some years. It confirmed that the claims remain the starting point for assessing patentability under Articles 52 to 57 EPC, but that the description and drawings shall always be consulted to interpret the claims, and not only if the skilled person considers the claims to be unclear or ambiguous when read in isolation.
At first blush, T 0070/23, which was decided before G1/24, might appear to be at odds with the Decision of G1/24. After all, the respondent’s arguments that the claims of the patent in suit should be read in combination with paragraph [0045] appear to conform with the Decision of G1/24. However, T 0070/23 would appear to sit within the conclusions of G1/24 and sets limitations to the lengths to which one can rely on the description.
Specifically, T 0070/23 shows that, whilst the description can be used to interpret the claims, it cannot be relied upon to import meaning or technical features into the claims that were not already present. It also highlights the issues with relying on generic statements, such as were included in paragraph [0045] of the patent in suit, rather than specific, potentially detailed, definitions and descriptions.
Best Practices Moving Forward
G1/24 confirmed the importance of including a comprehensive “Definitions” section in the description of a patent application, in that it can help ensure that the claim scope falls in line with the applicant’s understanding of the terms used in the claims. T 0070/23 goes further by demonstrating that those definitions are best couched in descriptive, non-generic wording since generic language cannot be relied upon to add meaning to a term in a claim.
As this case shows, including a comprehensive description that specifically discloses the technical effect(s) associated with the distinguishing features of an invention is of paramount importance when drafting a patent application, and could make or break arguments in favour of at least inventive step.
Conclusion
T 0070/23, in view of G1/24, highlights the importance of drafting a patent application that effectively and specifically defines the terms used therein to ensure that the claims, and the scope of protection, are interpreted as the applicant intends, and that language intended to support that interpretation can be effectively relied upon.
At WP Thompson, we help clients craft descriptions that robustly support their invention's technical effects throughout the entire claim scope.