| European Case Law Identifier: | ECLI:EP:BA:1985:T001781.19850307 | ||||||||
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| Date of decision: | 07 March 1985 | ||||||||
| Case number: | T 0017/81 | ||||||||
| Application number: | 79100968.1 | ||||||||
| IPC class: | - | ||||||||
| Language of proceedings: | DE | ||||||||
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| Title of application: | - | ||||||||
| Applicant name: | Bayer II | ||||||||
| Opponent name: | - | ||||||||
| Board: | 3.3.01 | ||||||||
| Headnote: | Where a legal position has been fundamentally clarified by the decision of the Enlarged Board of Appeal and a new type of claim for particular inventions has been allowed, the Board remits the case to the Examining Division regardless of whether claims of that type have already been filed. | ||||||||
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| Keywords: | Remittal on the basis of a decision of the Enlarged Board of Appeal Second medical indication |
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Summary of Facts and Submissions
I. European patent application No. 79 100 968.1 filed on 30 March 1979 was refused by decision of the Examining Division of the EPO dated 20 March 1981. This decision was based on several claims which are still valid and include claims directed to the use of chemical substances for therapeutic purposes (hereinafter: use claims)
II. The main ground for refusing the application was that the Convention does not permit the grant of a patent with such use claims.
III. The applicant lodged an appeal against this decision on 20 May 1981. In the course of the appeal proceedings the Board of Appeal put before the Enlarged Board of Appeal of the EPO the question of law as to whether a European Patent may be granted with use claims (cf. Referral decision T 17/81 "Nimodipin/Bayer" of 30 May 1983, OJ EPO 7/1983, p.266).
IV. In its decision G 1/83 of 5 December 1984 the Enlarged Board of Appeal decided that a European Patent may not be granted with the above kind of claims, but may be granted with claims directed to the use of a substance or composition for preparation of a drug for a specific, new and inventive therapeutic use.
Reasons for the Decision
1. As stated already in the Referral Decision, the appeal complies with Articles 106 to 108 and Rule 64 EPC and is therefore admissible.
2. The Decision of the Enlarged Board of Appeal has fundamentally clarified the legal position and created a new type of claim for inventions of this nature. The application in question in the appeal proceedings still contains use claims of the kind excluded by the Enlarged Board of Appeal. The grant of a patent now depends on whether the existing claims are redrafted, in conformity with Article 123(2) and Rule 86(3) EPC, in such a way as to comply with the Decision of the Enlarged Board of Appeal.
3. Therefore the claims need to be redrafted. This new draft should be prepared before the Examining Division, both because this will save time and avoid bypassing the first instance, and because the substantive examination has still to be carried out. The Board of Appeal therefore remits the case under Article 111(2) EPC to the Examining Division for further prosecution.
4. In the light of Rule 67 EPC, a reimbursement of the fee for appeal is not called for, since there has been no substantial procedural violation within the meaning of that provision.
ORDER
For these reasons, it is decided that:
1. The contested decision is set aside.
2. The case is remitted to the Examining Division for further prosecution.
