| European Case Law Identifier: | ECLI:EP:BA:1985:T009282.19850315 | ||||||||
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| Date of decision: | 15 March 1985 | ||||||||
| Case number: | T 0092/82 | ||||||||
| Application number: | 78101367.7 | ||||||||
| IPC class: | - | ||||||||
| Language of proceedings: | EN | ||||||||
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| Title of application: | Use of butoxybenzylhyoscyamine bromide in pharmaceutical compositions against deafness and tinnitus | ||||||||
| Applicant name: | Eisai | ||||||||
| Opponent name: | - | ||||||||
| Board: | 3.3.01 | ||||||||
| Headnote: | - | ||||||||
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| Keywords: | Remittal the case/Decision Enlarged Board of Appeal Second medical indication |
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Summary of Facts and Submissions
I. European patent application No. 78 101 367.7 filed on 14 November 1978 was refused by decision of the Examining Division of the EPO dated 12 February 1982. This decision was based on a claim which is still on file and is directed to the use of chemical substances for therapeutic purposes (hereinafter : use claim).
II. The main ground for refusing the application was that the Convention does not permit the grant of a patent with such a use claim.
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, in a referral decision of the 20 June 1983, 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 in a similar case T 17/81, "Nimodipin/Bayer" of 30 May 1983, OJ EPO 7/1983, p. 266).
IV. In its decision Gr 05/83 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 a substance or composition for preparation of a medicament 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 a use claim 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 demand for protection needs to be newly formulated. The new approach should be dealt with before the Examining Division, both because this will save time and avoid loss of an 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.
