T 0059/87 (Friction reducing additive/MOBIL II) of 26.4.1988

Summary of Facts and Submissions

I. A notice of opposition to European patent No. 36 708 was filed on 4 December 1984, in which it was in particular alleged that the claimed subject-matter lacked novelty, or in the alternative, lacked an inventive step having regard to a number of documents, particularly:

(1) US Patent No. 2 795 548 (2) US Patent No. 3 117 089.

In response the patentee submitted amended claims.

In its Decision the Opposition Division held that the amended claims in the main request were admissible under Article 123 EPC, that these claims were novel, but that they lacked an inventive step.

II. An appeal was duly filed by the patentee. The Appellant maintained the main request, and during the appeal proceeding he also filed an auxiliary request.

III. The subject-matter of the patent is an additive for lubricating oil. The additive comprises borated hydroxyester compounds in accordance with generalised structural formulae set out in the description and claims. The main purpose of the additive is to reduce friction between sliding surfaces in engines, particularly automobile engines.

The patent as granted contained claims defining the compounds, and a claim defining a lubricant composition including such a compound.

The main claim of the main request defines "a lubricant composition" comprising:

(a) a major portion of a lubricating oil;

(b) at least 1 per cent by weight of the additive.

The Examples in the description disclose the use of 1, 2 and 4 per cent additive. The description as originally filed and granted states that the amount of additive may range from 0.1 to about 10 per cent, preferably from 0.5 to 5 per cent.

IV. As to the prior documents, document (2) in particular discloses the use of the same and other related compounds as an additive for oil, including lubricating oil, for the purpose of inhibiting the formation of rust when the oil is in contact with ferrous metal. The Examples in document (2) disclose the use of 0.1 to 0.5 per cent additive. The description states that it is advantageous to use from about 0.001 to about 10 per cent, preferably to about 2 per cent additive, but that greater or lesser amounts may be used, the amount being varied as required for rust inhibition.

V. At the conclusion of the oral proceedings, the Board of Appeal refused the main request of the Appellant. The Appellant argued that the claimed subject-matter in the main request was patentable as a "selection" from what is disclosed in document (2), following Decision T 198/84 "Thiochloroformates" (OJ EPO 1985, 209).

In the Board's judgement, the main claim of the main request lacks novelty having regard to the disclosure of a lubricant composition including at least 1 per cent by weight of the same compounds as additive in document (2).

A Decision to this effect has been made by the Board on 26 April 1988.

VI. The main claim of the Appellant's auxiliary request defines the matter for which protection is sought as:

"Use of at least 1 per cent by weight based on the total composition of (defined compounds in accordance with structural formulae), as a friction reducing additive in a lubricant composition comprising a major portion of a lubricating oil".

VII. In order to decide upon the auxiliary request, the Board has to determine the following matters:

(i) whether such an amended claim, involving a change of category of claim, is admissible having regard to Article 123(3) EPC;

(ii) whether the claimed subject-matter is novel having regard to Article 54 EPC;

(iii) whether the claimed subject-matter involved an inventive step having regard to Article 56 EPC.

Reasons for the Decision

1. Article 112(1)(a) EPC empowers a Board of Appeal to refer any question to the Enlarged Board of Appeal of its own motion, if it considers that a decision is required on an important point of law which is raised by that question.

2. The first question to be decided in relation to the auxiliary request is whether such an amended claim, involving a change of category of claim, is admissible having regard to Article 123(3) EPC, which provides that "The claims ... may not be amended during opposition proceedings in such a way as to extend the protection conferred".

It appears from Chapter III of the EPC, especially Articles 64 and 69 EPC, that the protection conferred by a European patent is to be determined primarily by the terms of the claims; furthermore, insofar as the protection conferred is the same as the rights conferred by a patent, it is to be determined in accordance with the national laws of the designated Contracting States.

It follows that a main object of Article 123(3) EPC appears to be to prevent an amendment to the claims of a European patent during opposition proceedings before the EPO, if the effect of the amendment is to make an activity an infringement of the patent after amendment which would not have been an infringement before the amendment.

Decisions of the EPO, including the Boards of Appeal, in relation to amendments involving a change of category of claim have generally so far been made on an "ad hoc" basis, and there is little clear jurisprudence on the proper interpretation of Article 123(3) EPC. In the view of this Board, this is an important point of law of general importance.

3. The second question to be decided in relation to the auxiliary request, that of novelty, only arises if the amendment is admissible having regard to Article 123(3) EPC.

With reference to the wording of the main claim of the auxiliary request as set out in paragraph V above, it is apparent from the summary of document (2) as set out in paragraph III above that document (2) discloses the use of amounts greater than 1 per cent by weight of compounds as defined in the claim, as additive in a lubricant composition comprising a major portion of a lubricating oil. In document (2), as explained in paragraph III above, the additive was used to inhibit the formation of rust. In contrast, in the claims in suit the additive is required to be used "as a friction reducing additive".

The question to be decided is whether the claimed use of the defined additive "as a friction reducing additive" is novel having regard in particular to the disclosure of document (2).

4. In Decision T 231/85, a different composition of this Board decided that a claim to a new use (as a fungicide) of a known compound, which had been previously disclosed for use as a plant growth regulator, was novel for the purpose of Article 54 EPC, even though the new use did not involve any new means of realisation (spraying on plants).

If the principle underlying this Decision was applied to the present case, the claims in suit would be held to be novel.

On the other hand, according to the national laws of many Contracting States, the claims in suit would be held to lack novelty, primarily for the reason that the previously disclosed use of the additive in a lubricating oil composition, although specifically stated to be for the purpose of inhibiting rust formation, would inherently be a use as a friction reducing additive as well.

In Decision Gr 05/83 "Second medical indication" (OJ EPO 1985, 64), the Enlarged Board of Appeal referred to the fact that Article 52(1) EPC expresses "a general principle of patentability", and stated that "it is clear that in all fields of industrial activity other than those of making products for use in surgery, therapy and diagnostic methods, a new use for a known product can be fully protected as such by claims directed to that use" (paragraph 21).

The Enlarged Board went on to refer to Article 54(5) EPC as an exception to this general rule so far as the first use of medicaments is concerned, in that the required novelty for the medicament is derived from the new pharmaceutical use; and by analogy it derived novelty for second or further medical uses from the new pharmaceutical use in each case. However, it also stated that "the application of this special approach to the derivation of novelty can only be applied to claims to the use of substances or compositions intended for use in a method referred to in Article 52(4) EPC" (paragraph 21).

5. Clearly, a new use of a known compound or composition may well constitute an inventive contribution to the art - and this is true whether or not the new use is a pharmaceutical use. Whether a claim to the use of a known composition for a new purpose constitutes novel subject-matter, even when the new use does not involve any new means of realisation, is an important point of law which affects industry generally.

6. In the present case, in relation to the issue of inventive step, the technical problem underlying the subject-matter claimed in the auxiliary request is to provide a further additive for a lubricant composition for directly reducing the friction between sliding surfaces in engines. In the Board's judgement none of the prior documents relied upon in the opposition are concerned with this problem, and a skilled man wishing to solve that problem and reading these prior documents would receive no relevant teaching. In the Board's view, it is particularly relevant that the skilled man would know that lubricating oil for internal combustion engines normally comprised not only rust inhibiting additives and friction reducing additives, but also a number of other additives, such as anti-wear agents, ashless dispersants, surfactants, detergents, antioxidants, anti-corrosion agents and viscosity improvers. Thus, in the Board's judgement the claimed subject-matter of the auxiliary request is inventive for the purpose of Article 56 EPC.

ORDER

For these reasons, it is decided that:

The following questions concerning important points of law shall be referred to the Enlarged Board of Appeal for decision:

(i) When amended claims involving a change of category (here: from a "compound" claim to "use of that compound in a composition for specified purpose") are proposed in opposition proceedings, what considerations should be taken into account when deciding on the admissibility of such amendments having regard to Article 123(3) EPC? In particular, how far should the national laws of Contracting States relating to infringement be considered?

(ii) Can a patent with claims directed to a "compound" and to a "composition including such compound" be amended during opposition proceedings so that the claims are directed to the "use of that compound in a composition" for a particular purpose?

(iii) Is a claim to the use of a compound for a particular non-medical purpose novel for the purpose of Article 54 EPC, having regard to a prior publication which discloses the use of that compound for a different non-medical purpose, so that the only novel feature in the claim is the purpose for which the compound is used? The Registrar: The Chairman: