Summary of Facts and Submissions 
I. European patent application 81 301 663.1 filed on 15 April
1981 and published on 28 October 1981 with publication number 38
674 claiming the priority of the prior application of 21 April
1980 (JP-53127/80), was refused by the decison of the Examining
Division of the European Patent Office dated 19 January 1984.
The decision was based on claims 1 to 13 filed on 19 November
1983. The main claim was worded as follows:
"1. Use of a compound of the formula:
FORMULA
wherein R is methyl or methoxy, or two R's taken together
represent -CH=CH-CH=CH-; and n is an integer of 4 to 22, for the
treatment of a mammal suffering from allergic disease due to
slow reacting substance of anaphylaxis."
II. The reason given for the refusal was that claims 1 to 9
relate to a method of treatment of a mammal, and as such these
claims are not susceptible to industrial application under
Article 52(4) EPC and therefore not patentable. The decision
also referred to the "Nimodipin/BAYER" case (T 17/81, OJ 7/1983,
266-267), wherein the matter of the use of chemical substance
for therapeutic purposes had been submitted to the Enlarged
Board of Appeal.
III. On 13 March 1984 the applicant lodged an appeal against the
decision of 19 January 1984 and submitted the Statement of
Grounds within the prescribed time. It is requested by the
applicant that the consideration of the allowability of use
claims should be postponed until a decision has been given by
the Enlarged Board of Appeal in the Nimodipin case.
Reasons for the Decision
1. The appeal complies with Articles 106 to 108 and Rule 64 EPC
and is, therefore, admissible.
2. The matter of "use claims in therapy" had already been under
consideration by the Enlarged Board of Appeal (EBA) when the
decision of the Examining Division refusing the application fell
in the case of the present application. It is the opinion of the
Board that, whenever a decision of the Examining Division
depends entirely on the outcome of proceedings before the EBA on
a legal question or point of law raised according to Article 112
EPC - and this is known to the Examining Division - the further
examination of the application must be suspended until the
matter is decided by the EBA. The refusal of the application was
therefore inappropriate and the appeal fee must be refunded in
view of a substantial procedural violation according to Rule 67
EPC.
ORDER
For these reasons, It is decided that:
1. The Decision of the Examining Division of the European Patent
Office dated 19 January 1984 is set aside.
2. The application is remitted to the Examining Division in
order to await the decision of the Enlarged Board of Appeal in
the question of use claims in therapy and then to continue the
substantive examination accordingly.
3. The appeal fee is reimbursed.
Remarks:
O.J. EPO issue: 1984,489
Case law reports:
