BESCHWERDEKAMMERN BOARDS OF APPEAL OF CHAMBRES DE RECOURS

DES EUROPÄISCHEN THE EUROPEAN PATENT DE L’OFFICE EUROPEEN

PATENTAMTS OFFICE DES BREVETS

Internal distribution code:

(A) [X] Publication in OJ
(B) [ ] To Chairmen and Members
(C) [ ] To Chairmen
(D) [ ] No distribution

D E C I S I O N
of 17 June 2004

Case Number: T 0015/01 - 3.3.4

Application Number: 92913710.7

Publication Number: 0587780

IPC: A61K 39/12

Language of the proceedings: EN

Title of invention:
Causative agent of the mystery swine disease, vaccine
compositions and diagnostic kits

Patentee:
Stichting Dienst Landbouwkundig Onderzoek

Opponents:
Cyanamid Iberica
Akzo Nobel N.V.

Headword:
Mystery Swine Disease/SDLO

Relevant legal provisions:

EPC Art. 54, 56, 76(1), 83, 87(1), 88, 100, 107, 112, 123(2),
(3), 139(2), 167(2), (5)
EPC R. 20, 57a, 61, 64(a), 65(2), 87, 88, 90(1), 101(7)
PCT Art. 8(2)
Paris Convention Articles 4F, 4G

EPA Form 3030 06.03

 - 2 -

Keyword:
"Admissibility of appeal (yes) - party status of universal
successor of original patentee (yes) - correction of wrong
designation of appellant (allowed)"
"Allowability of amendments: new set of claims for ES/GR
(yes)"
"Broadening of scope of protection (no)"
"Priority (yes) - doctrine of exhaustion of priority (no)"
"Novelty and inventive step (yes)"

Decisions cited:
G 0002/88, G 0003/93, G 0007/93, G 0002/98, G 0002/02,
T 0522/94, T 0353/95, T 0001/97, T 0461/97, T 0097/98,
T 0656/98, T 0814/98, T 0460/99, T 0998/99, T 0715/01

Headnote:
1. The same priority right may be validly claimed in more than
one European patent application; there is no exhaustion of
priority rights (see points 25 to 41 of the reasons).

2. Rule 20(3) EPC does not apply in the context of universal

successions in law. The universal successor of a patent
applicant or patentee automatically acquires party status
in proceedings pending before the European Patent Office
(see points 4 to 12 of the reasons).

3. Neither Rule 57a nor Article 123(3) EPC is infringed for

the sole reason that a patent proprietor files a separate
set of claims for a specific contracting state in
opposition proceedings in order to take into account that,
due to a reservation made under Article 167(2)(a) EPC,
product claims as granted would be considered invalid in
this state (see points 17 to 21 of the reasons).

EPA Form 3030 06.03

 Europäisches European Office européen

b Patentamt

Beschwerdekammern
Patent Office

Boards of Appeal
des brevets

Chambres de recours

Case Number: T 0015/01 - 3.3.4

D E C I S I O N
of the Technical Board of Appeal 3.3.4
of 17 June 2004

Appellant I: Stichting Dienst Landbouwkundig Onderzoek

(Proprietor of the patent) Costerweg 50
NL-6701 BH Wageningen (NL)

Representative: Renes, J.
Vereenigde
Postbus 87930
NL-2508 DH Den Haag (NL)

Appellant II: Cyanamid Iberica

(Opponent 01) Cristobal Bordiu 35
E-28013 Madrid (ES)

Representative: von Menges, A.

Uexküll & Stolberg
Patentanwälte
Beselerstrasse 4
D-22607 Hamburg (DE)

Respondent: Akzo Nobel N.V.

(Opponent 02) P.O. Box 9300
NL-6800 SB Arnhem (NL)

Representative: Van Gent, Marieke

INTERVET INTERNATIONAL B.V.
Wim de Korverstraat 35
NL-5831 AA Boxmeer (NL)

Decision under appeal: Interlocutory decision of the Opposition

Division of the European Patent Office posted
16 October 2000 concerning maintenance of
European patent No. 0587780 in amended form.

Composition of the Board:

Chairwoman: U. M. Kinkeldey
Members: R. E. Gramaglia
R. Moufang
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Summary of Facts and Submissions

I. European patent No. 0587780 is derived from EURO-PCT

application PCT/NL92/00096 (European application
No. 92913710.7) filed on 5 June 1992 in the name of
Stichting Centraal Diergeneeskundig Instituut. It
claims priorities from EP 91201398 of 6 June 1991
(document (D47)) and EP 92200781 of 18 March 1992
(document (D48)). The patent relates to the Lelystad
Agent causative of the Mystery Swine Disease (MSD) and
was granted on the basis of 26 claims for contracting
states AT, BE, CH, DE, DK, ES, FR, GB, GR, IT, LI, LU,
MC, NL and SE, of which claims 1, 2, 6, 10, 14, 15, 23
and 26 read as follows:

"1. Composition of matter comprising isolated Lelystad

Agent which is the causative agent of Mystery Swine
Disease, said Lelystad Agent essentially corresponding
to the isolate Lelystad Agent (CDI-NL-2.91) deposited
5 June 1991 with the Institut Pasteur, Paris, France,
deposit number I-1102.

2. Composition of matter according to claim 1 which

comprises killed isolated Lelystad Agent.

6. Composition of matter comprising isolated or

synthetic protein, (poly)peptide, or nucleic acid
derived from Lelystad Agent as defined in claim 1.

10. Composition of matter comprising a (poly)peptide

having an amino acid sequence derived from a protein of
Lelystad Agent as defined in claim 1, the (poly)peptide
being produced by a cell capable of producing it due to
genetic engineering with appropriate recombinant DNA.

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14. Vaccine composition for vaccinating animals, in

particular mammals, more in particular pigs or swines,
to protect them against Mystery Swine Disease,
comprising Lelystad Agent as defined in claim 1, and a
suitable carrier or adjuvant.

15. Vaccine composition according to claim 14 which

comprises killed Lelystad Agent.

23. Diagnostic kit for detecting an antibody which

specifically recognizes Lelystad Agent as defined in
claim 1 in a sample, in particular a biological sample
such as blood or blood serum, sputum, saliva, or
tissue, derived from an animal, in particular a mammal,
more in particular a pig or swine, comprising an
antigenic part or component of Lelystad Agent, and
suitable detection means of an antibody detection
assay.

26. A process for diagnosing whether an animal, in

particular a mammal, more in particular a pig or swine,
is contaminated with the causative agent of Mystery
Swine Disease, comprising preparing a sample, in
particular a biological sample such as blood or blood
serum, sputum, saliva, or tissue, derived from the
animal, and examining whether it contains Lelystad
Agent nucleic acid, Lelystad Agent antigen, or antibody
specifically recognizing Lelystad Agent, said Lelystad
Agent being as defined in claim 1."

II. Notices of opposition were filed by opponents 01 and 02,

both requesting the revocation of the European patent
on the grounds of Article 100(a) and (b) EPC. In its

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interlocutory decision posted on 16 October 2000, the

opposition division maintained the patent on the basis
of the sole claim of the auxiliary request then on file:

"1. Composition of matter comprising isolated Lelystad

Agent which is the causative agent of Mystery Swine
Disease, said Lelystad Agent essentially corresponding
to the isolate Lelystad Agent (CDI-NL-2.91) deposited
5 June 1991 with the Institut Pasteur, Paris, France,
deposit number I-1102."

During the opposition proceedings, the patentee, which

had already changed its name in 1994 to "Stichting
Instituut voor Veehouderij en Diergezondheid" and in
1995 to "Stichting Instituut voor Dierhouderij en
Diergezondheid", was merged in 1998 into Stichting
Dienst Landbouwkundig Onderzoek. The EPO was not
informed of any of these changes.

III. Two appeals were filed against the decision of the

opposition division. The first was said to be filed on
behalf of Stichting Centraal Diergeneeskundig Instituut,
the second was filed by opponent 01 (appellant II). By
fax received on 15 June 2004, the patentee requested
that its change into Stichting Dienst Landbouwkundig
Onderzoek (appellant I) be recorded, paid the
registration fee and submitted a statement from Freerk
Volders, deputy civil-law notary in Rotterdam, of
11 June 2004 as evidence of the above-mentioned merger.

IV. Oral proceedings were held on 17 June 2004 and were

attended by both appellants. The respondent (opponent
02) was absent as previously announced. During the oral
proceedings appellant I filed a new main request.

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Appellant I furthermore requested that the name of the

appealing party in the notice of appeal and the
statement setting out the grounds of appeal be
corrected to "Stichting Dienst Landbouwkundig
Onderzoek".

Claims 1 to 6 of the new main request for contracting

states AT, BE, CH, DE, DK, FR, GB, IT, LI, LU, MC, NL
and SE read as follows:

"1. Composition of matter comprising isolated Lelystad

Agent which is the causative agent of Mystery Swine
Disease, said Lelystad Agent essentially corresponding
to the isolate Lelystad Agent (CDI-NL-2.91) deposited
5 June 1991 with the Institut Pasteur, Paris, France,
deposit number I-1102.

2. Composition of matter according to claim 1, which

comprises killed isolated Lelystad Agent.

3. Composition of matter comprising an isolated

component of Lelystad Agent as defined in claim 1,
wherein said isolated component is a Lelystad
Agent-specific protein, polypeptide or peptide.

4. Vaccine composition for vaccinating animals, in

particular mammals, more in particular pigs or swines,
to protect them against Mystery Swine Disease,
comprising Lelystad Agent as defined in claim 1 and a
suitable carrier or adjuvant, which comprises killed
Lelystad Agent.

5. Diagnostic kit for detecting an antibody, which

specifically recognizes Lelystad Agent as defined in

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claim 1 in a sample, in particular a biological sample

such as blood or blood serum, sputum, saliva, or
tissue, derived from an animal, in particular a mammal,
more in particular a pig or swine, comprising an
antigenic component of Lelystad Agent, and suitable
detection means of an antibody detection assay.

6. A process for diagnosing whether an animal, in

particular a mammal, more in particular a pig or swine,
is contaminated with the causative agent of Mystery
Swine Disease, comprising preparing a sample, in
particular a biological sample such as blood or blood
serum, sputum, saliva, or tissue, derived from the
animal, and examining whether it contains Lelystad
Agent nucleic acid, Lelystad Agent antigen, or antibody
specifically recognizing Lelystad Agent, said Lelystad
Agent being as defined in claim 1."

Claims 1 to 6 for contracting states ES and GR read as

follows:

"1. A method for producing a composition of matter

comprising isolated Lelystad Agent which is the
causative agent of Mystery Swine Disease, said Lelystad
Agent essentially corresponding to the isolate Lelystad
Agent (CDI-NL-2.91) deposited 5 June 1991 with the
Institut Pasteur, Paris, France, deposit number I-1102,
comprising isolating said Lelystad Agent from a sample
taken from affected piglets or affected sows or
experimentally infected SPF pigs, or from cells
inoculated with said sample.

2. A method according to claim 1, further comprising

killing said Lelystad Agent.

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3. A method for producing a composition of matter

comprising an isolated component of Lelystad Agent as
defined in claim 1, wherein said isolated component is
a Lelystad Agent-specific protein, polypeptide or
peptide, comprising producing said protein by
recombinant DNA techniques or producing said peptide by
peptide synthesis techniques.

4. A method for producing a vaccine composition for

vaccinating animals, in particular mammals, more in
particular pigs or swines, to protect them against
Mystery Swine Disease, comprising providing Lelystad
Agent which is the causative agent of Mystery Swine
Disease, said Lelystad Agent essentially corresponding
to the isolate Lelystad Agent (CDI-NL-2.91) deposited
5 June 1991 with the Institut Pasteur, Paris, France,
deposit number I-1102 and mixing said Lelystad Agent
with a suitable carrier or adjuvant, further comprising
the step of killing said Lelystad Agent.

5. A method for producing a diagnostic kit for

detecting an antibody which specifically recognizes
Lelystad Agent as defined in claim 1 in a sample, in
particular a biological sample such as blood or blood
serum, sputum, saliva, or tissue, derived from an
animal, in particular a mammal, more in particular a
pig or swine, comprising providing an antigenic
component of Lelystad Agent, and further providing
suitable detection means of an antibody detection
assay.

6. A process for diagnosing whether an animal, in

particular a mammal, more in particular a pig or swine,

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is contaminated with the causative agent of Mystery

Swine Disease, comprising preparing a sample, in
particular a biological sample such as blood or blood
serum, sputum, saliva, or tissue, derived from the
animal, and examining whether it contains Lelystad
Agent nucleic acid, Lelystad Agent antigen, or antibody
specifically recognizing Lelystad Agent, said Lelystad
Agent being as defined in claim 1."

V. The following documents are cited in the present

decision:

(D1) Collins J.E et al., 71st Conf. Res. Workers in

Anim. Dis., Chicago, IL , Abstract No. 2;

(D4) Iglesias G. et al., Veterinary Bulletin, Vol. 60,

Abstract 1541, pages 255-256 (1990);

(D6) Wensvoort G. et al., Veterinary Quarterly,

Vol. 1, pages 121-143 (July 1991);

(D7) McCullough S.J. et al. in "The new pig disease",

Chapter 9 of the Report on the Seminar/Workshop
held in Brussels on 29-30 April 1991;

(D8) Ohlinger V.F. et al., Tierärztl. Umschau, Vol.

46, page 703-708 (1991);

(D9) Wensvoort G. et al., Vet. Microbiol., Vol. 33,

pages 185-193 (1992);

(D22) GB-A-2 282 811;

(D23) EP-B-0610250;

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(D24) Terpstra C. et al. in "The new pig disease : A

report", Seminar/Workshop held in Brussels on 29-
30 April 1991, pages 36-45;

(D30) Murphy B.R. et al. in "Fields Virology", Second

Edition, Raven Press, New York, pages 469-502
(1990);

(D36) WO-A-93/07898

(D45) Legal opinion provided by Klaas Bisschop dated

12 May 2004;

(D47) Priority document EP 91201398 of 6 June 1991;

(D48) Priority document EP 92200781 of 18 March 1992.

VI. The submissions by appellant I (patentee), in so far as

they are relevant to the present decision, can be
summarised as follows:

Admissibility of the appeal by appellant I

− The main requirements for filing an appeal were

that a party had to be adversely affected by the
decision under appeal and to be unambiguously
identifiable. Both requirements were fulfilled in
the present case. Under Dutch law, after a merger,
the acquiring entity may continue pending
proceedings and file an appeal under the name of
the merged entity.

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Rule 57a EPC

− The filing of separate claims for ES/GR was

justified on the grounds that a number of claims
as granted might be ineffective in Spain and
Greece since the reservations made by both
contracting states under Article 167(2)(a) EPC
were still in force on the date of filing the
application.

− The term "specific" in claim 3 (including ES/GR)

had been introduced to avoid possible problems
under Article 54 EPC.

Article 123(3) EPC

− Amending the product-type claims to method-type

claims for ES/GR did not extend the protection
conferred by the granted claims.

Article 123(2) EPC

− The wording "comprising isolating said Lelystad

Agent from a sample taken from affected piglets or
affected sows or experimentally infected SPF pigs,
or from cells inoculated with said sample" in
claim 1 for ES/GR found a basis on page 24,
lines 7 to 25, of the PCT application as filed.

Article 83 EPC

− The patent in suit taught how to prepare the

killed vaccines by conventional techniques (see
page 6, lines 28-33).

1384.D
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− Example 3 of document (D36) which was appellant

II's own application (see eg page 33, line 1, to
page 35, line 20) showed the efficacy of killed
vaccines obtained as suggested in the patent in
suit.

Article 87(4) EPC (Priority)

− The claims were entitled to the filing date of the

first priority document (P1)(= document (D47)).
The doctrine of exhaustion of priority rights
should not be applied.

Novelty

− The "myxo-like" particles of document (D24) could

not be equated with the claimed Lelystad Agent
since said "myxo-like particles", having a size of
130-200 nm as observed by EM (see page 41,
lines 14-16), did not even remotely resemble the
Lelystad Agent, said Agent being at least three
times smaller, having a size of 45-55 nm as
observed by EM (see patent in suit, page 13,
lines 8-11). That other viruses could infect lung
alveolar macrophages was shown by document (D4),
relating to the Aujeszky's disease virus.

− As for document (D7), which was based on the work

already described in document (Dl), no micro-
organism was found. These documents related to
homogenates containing a great many viruses and
bacteria. Apparently, no substantial further
progress was made by the authors of documents (Dl)

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and (D7), again illustrating the difficulties in

finding the causative agent of MSD. Consequently,
there was no teaching whatsoever in documents (D1)
and (D7) that was novelty-destroying to claim 1,
as homogenates of viruses were not within the
scope of present claim 1 (cf the feature
"isolated").

− Documents (D6), (D8) and (D9) did not represent

prior art because the claims were entitled to the
filing date of the first priority document (P1).

Inventive step

− Document (D24) alone provided the skilled person

with no guidance on how to solve the problem of
finding the causative agent of MSD. It taught (see
page 43, third paragraph, lines 1-3) that a wide
variety of micro-organisms could be isolated from
cases of MSD, without any pointer that some of
them were the likely candidate and the Lelystad
Agent was not among the ones identified. It was
admitted by the authors of this document that the
results "were just as inconclusive" as those of
others (see page 44, second paragraph).

− Combining document (D24) with common general

knowledge or with document (Dl) would not have
provided any more guidance than that given in
document (D24) alone.

− The main teaching that a skilled person wishing to

find the causative agent of MSD could learn from
document (D7) was that the authors of this

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document preferred not to filter their homogenates

to reproduce the clinical signs of MSD, as
filtering abolished the possibility of reproducing
the clinical signs of the disease. Consequently,
the skilled person would conclude from the
experimental results of document (D7) that most
likely bacteria, or even larger micro-organisms,
in the unfiltered homogenate were necessary for
reproducing the prominent clinical signs of MSD in
experimental infections. Thinking that bacteria
were essential, the skilled person would have used
technologies from bacteriology and would not have
found the agent looked for.

− Documents (D6), (D8) and (D9) did not represent

prior art because the claims were entitled to the
filing date of the first priority document (P1).

VII. The submissions in writing and during oral proceedings

by appellant II (opponent 01), in so far as they are
relevant to the present decision, are summarised as
follows:

Admissibility of the appeal by appellant I

− The appeal filed by appellant I had to be rejected

as inadmissible.

− The notice of appeal of appellant I was filed on

behalf of Stichting Centraal Diergeneeskundig
Instituut. After September 1998, there was no
longer a legal entity by the name of Stichting
Centraal Diergeneeskundig Instituut. A
non-existing legal entity could not validly file

1384.D
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an appeal. Under Dutch law, an entity which had

ceased to exist due to a merger was not allowed to
file an appeal in its name. The appeal thus failed
to comply with the requirements of Article 108 and
Rule 64 EPC.

− It followed from decision T 656/98 (OJ EPO 2003,

385) that it was not allowed retroactively to
change the identity of an appellant.

Rule 57a and Article 123(3) EPC

− The filing of a separate set of claims for ES and

GR was neither justified under Rule 57a EPC nor
acceptable under Article 123(3) EPC as it
broadened the scope of protection conferred by the
granted claims.

Article 123(2) EPC

− The wording "comprising isolating said Lelystad

Agent from a sample taken from affected piglets or
affected sows or experimentally infected SPF pigs,
or from cells inoculated with said sample" in
claim 1 for ES/GR represented an impermissible
generalisation from a specific example in the
application as filed.

Article 83 EPC

− The disclosure of the patent was insufficient for

obtaining an inactivated (killed) Lelystad Agent
vaccine according to claim 4, as there was no

1384.D
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evidence in the patent of successful immunisation

of the subject to be protected.

Article 87(4) EPC (Priority)

− The priority of the earlier priority document (D47)

was already claimed in the later priority document
(D48). Therefore, according to the most recent
case law embracing the doctrine of exhaustion of
priority (see decision T 998/99 of 15 September
2003), none of the claims was entitled to the
filing date of the first priority document (P1),
with the consequence that intermediate documents
(D6), (D8) and (D9) were prior art.

Article 54 EPC (Novelty)

− Owing to the wording "essentially corresponding

to", claim 1 covered not only the isolate
specifically deposited by the patentee but also
any other isolates which were immunologically
cross-reactive or which comprised a DNA sequence
hybridising to the deposited Lelystad Agent.

− Documents (D1) and (D7) taught that the symptoms

of MSD could be observed upon infecting pigs with
filtered homogenates. These filtrates comprised,
of necessity, the claimed virus.

− Claim 1 lacked novelty in view of the "myxo-like"

virus isolated according to document (D24) from
the lung macrophages of pigs infected with MSD.
Not only did both the patent in suit and document
(D24) use exactly the same method for isolation of

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the causative agent of MSD (compare section 2 of

"Methods" on page 38 and the paragraph "Virus and
mycoplasma isolation" on page 41 of document (D24)
with the method described in the patent in suit
for the isolation of the Lelystad Agent, see
page 11, lines 44 to 47; page 11, lines 55 to 58;
page 12, lines 16 to 20; see also pages 14 and 15
of priority document (D47)), but the Lelystad
Agent also had the same characteristic of the
"myxo-like" virus isolated according to document
(D24).

− Therefore the method used for isolation of the

causative agent of MSD in document (D24) and in
the patent in suit could only yield the same virus,
be it named "Lelystad Agent" or "myxo-like virus".
This was shown by document (D23), a post-published
document taken as expert opinion, wherein others
isolated the same virus (named "PRRS virus") by
applying the same isolation method of document
(D24)

− Claim 1 lacked novelty in view of documents (D6)

and (D9) describing the successful isolation and
characterisation of LV, and of document (D8),
disclosing a repetition of the same experiments as
in document (D6).

Article 56 EPC (Inventive step)

− None of the isolates described in document (D24)

was known to cause symptoms attributable to MSD
except for the "myxo-like" isolate that was
observed to cause cytopathic effects on lung

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macrophages, ie cells known to be affected by the

disease. On the basis of document (D24), the
person skilled in the art would have inevitably
concluded that the new "myxo-like" virus was most
likely the causative agent of MSD. To test this
hypothesis, the new "myxo-virus" could have been
used in the experimental infection method that had
been part of the common general knowledge for
years (see eg document (D1)). That test would have
shown that the clinical signs of the disease could
be reproduced upon experimental infection using
the isolate.

− Other teams were able to reproduce the teaching of

document (D24) and easily isolate the virus
responsible for MSD (see eg documents (D6) and
(D8)).

− Since the claims were not entitled to the filing

date of the first priority document (D47),
documents (D6), (D8) and (D9) were prior art and
rendered the subject-matter of the claims obvious.

VIII. Appellant I (patentee) requested that the decision

under appeal be set aside and that the patent be
maintained on the basis of the new main request filed
during oral proceedings.

Appellant II (opponent 01) requested that the appeal of

appellant I be rejected as inadmissible, the decision
under appeal be set aside and patent No. 0587780 be
revoked.

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Reasons for the decision

Party status of Stichting Dienst Landbouwkundig Onderzoek

(SDLO) and admissibility of appeal by appellant I

1. The admissibility of the appeal of appellant I has been

called into question by appellant II with the argument
that the appeal was filed on 14 December 2000 on behalf
of a legal entity which had already ceased to exist in
1998 due to a merger. Since this issue was raised only
at a rather late stage of the appeal proceedings,
appellant I objected to its introduction into the
present proceedings. However, admissibility issues can
and have to be examined at every stage of the appeal
procedure. According to established case law, the
admissibility of an opposition must be checked ex
officio in every phase of the opposition and ensuing
appeal proceedings (T 522/94, point 3, OJ EPO 1998,
421). The same principles apply a fortiori to the
examination of the admissibility of an appeal.
Appellant I's procedural objection against the late
introduction of the issue cannot therefore succeed.

2. According to Article 107 EPC, an appeal may only be

filed by an adversely affected party to the proceedings.
The board thus has to determine, first, who the
relevant party was when the appeal was filed and,
secondly, whether the appeal was filed on behalf of
that party.

3. The application leading to the patent in suit was filed

by the Dutch foundation Stichting Centraal
Diergeneeskundig Instituut. As convincingly evidenced
by the declaration of deputy civil-law notary Volders

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of 11 June 2004, this legal entity changed its name in

1994, ie before the grant of the patent, into
"Stichting Instituut voor Veehouderij en
Diergezondheid" and, by a further deed of amendment
executed on 19 September 1995, into "Stichting
Instituut voor Dierhouderij en Diergezondheid" (SIDD).
Thus, when on 15 November 1995 both notices of
opposition were filed and the opposition proceedings
started, SIDD was the proprietor of the patent and
hence party to the proceedings. In this respect it does
not matter that the proprietor did not inform the EPO
or the opponents of its new name. Several earlier board
of appeal decisions have held that, as long as the
identity of a legal person is not at issue, the use of
a previous and therefore incorrect name, although being
unfortunate, does not have the consequence that the
party status is to be denied or that the respective
procedural acts have to be regarded as invalid (see eg
T 1/97 of 30 March 1999, point 1; T 461/97 of
26 October 1999, point 1).

4. In September 1998, ie during the opposition proceedings

before the first-instance department, a merger took
place between SIDD and another Dutch foundation,
Stichting Dienst Landbouwkundig Onderzoek (SDLO). As
evidenced by the declaration of deputy civil-law notary
Volders, SDLO was the acquiring foundation and SIDD the
disappearing foundation pursuant to the deed of merger.
As a consequence, SDLO became, as of 4 September 1998,
the successor in universal title of SIDD and thus, as a
matter of substantive law, proprietor of the patent in
suit. However, SDLO failed to inform the EPO of these
circumstances for more than five years after they had
happened. Only when appellant II, with its letter of

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12 May 2004, drew the attention of the board to the

merger, did appellant I request that the change be
recorded, pay the appropriate fee and produce
documentary proof with its fax letter of 15 June 2004.
Therefore, the question arises whether SDLO acquired
the party status of proprietor in the present
proceedings only at the date on which the request for
recording the change was filed or already
"automatically" at the date on which the merger took
place.

5. According to Rule 20(1) EPC, the transfer of a European

patent application is recorded in the Register of
European Patents at the request of an interested party
and on production of documents satisfying the EPO that
the transfer has taken place. According to Rule 20(3)
EPC, the transfer has effect vis-à-vis the EPO only
when and to the extent that the necessary documents
have been produced. Rule 20 EPC applies mutatis
mutandis to any transfer of the European patent made
during the opposition proceedings (see Rule 61 EPC).

6. In its decision T 656/98 (OJ EPO 2003, 385) the present

board, in a different composition, dealt with the
impact of Rule 20(3) EPC on the party status of
proprietor in opposition proceedings. In that case the
patentee, which was a company, had assigned its patent
to another company (transferee) during opposition
proceedings. Without requesting the assignment to be
recorded under Rule 20 EPC, the transferee had then
filed an appeal against the decision of the opposition
division. The board considered the appeal inadmissible
and held that, for a transferee of a patent to be
entitled to appeal, the requirements of Rule 20 EPC

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(request for recording the transfer, filing of

documentary evidence and payment of fee) had to be
complied with before expiry of the period for appeal.
The term "party" in Article 107 had to be interpreted
as being confined to the parties of record and their
duly recorded successors, including those who have
completed all the formalities necessary to be
recognised as the legal successors (see points 1.1 and
1.2). In view of Rule 20(3) EPC, later registration of
the transfer was not considered to validate the appeal
retroactively.

7. The factual situation before the board in decision

T 656/98 and in the present case is not the same. In
that decision, the appellant had claimed to have
acquired the patent through an assignment by the
patentee on record. Here, SDLO is, due to a merger, the
universal successor in law of the original patentee.
This difference is important for the following reasons:

8. Rule 20 EPC is concerned with the registering of

transfers (in the French version: "transferts", in the
German version: "Rechtsübergänge") of patent
applications and, in view of Rule 61 EPC, of patents.
Thus its wording, at least in the English and French
versions, does not unambiguously embrace cases where
the patent application or the patent becomes vested in
the new proprietor other than by transfer, ie in
particular where the change of proprietor status is
caused by universal succession of law. Decision
T 656/98 (see point 9) implicitly acknowledged that
such latter cases might have to be treated in a
different way.

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9. If Rule 20(3) EPC were to be applied in the context of

universal successions, procedurally undesirable
consequences would ensue. On the one hand, the
successor in law would acquire party status only after
fulfilling the requirements set out in Rule 20(1) and
(2) EPC. On the other hand, the applicant or proprietor
on record who ceases to exist automatically loses party
status. Under the procedural law of the EPC, a person
who does not exist any more cannot remain party to the
proceedings (see T 353/95 of 25 July 2000, point 2).
Both parties have put forward arguments concerning the
issue as to whether under Dutch civil procedural law an
appeal may be filed on behalf of a party which had
ceased to exist due to a merger. However, the board
considers this issue to be only of limited relevance to
the present proceedings: While it is true that the
status of a legal person as such has to be determined
by the applicable national law, the issue whether a
non-existing person can remain a party to the
proceedings before the EPO is to be determined
autonomously by the procedural law of the EPC.

10. It follows from the above that the application of

Rule 20(3) EPC in cases of universal succession would
lead to a procedural "vacancy" with respect to the
applicant or proprietor for a certain period of time.
Such a vacancy would not only amount to a rather
unfortunate procedural situation in itself, but would
also be difficult to reconcile with other provisions of
the EPC:

11. Pursuant to Rule 90(1)(a) EPC, proceedings before the

EPO are interrupted, inter alia, in the event of the
death of the patent applicant or proprietor. However,

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to the extent that these events do not affect the

authorisation of a representative appointed under
Article 134 EPC, proceedings are interrupted only on
application by such representative. In this context,
Rule 101(7) EPC provides that, subject to any
provisions to the contrary contained therein, an
authorisation does not terminate vis-à-vis the EPO upon
the death of the person who gave it.

It follows from these provisions - which, in the view

of the board, are applicable by analogy to situations
where a legal person ceases to exist due to a merger -
that the legislator has contemplated the procedural
consequences of universal succession in law for the
applicant or proprietor during patent grant or
opposition proceedings. The legislative mechanism
provided by Rules 90(1)(a) and 101(7) EPC makes it
possible that under these circumstances the proceedings
can continue without interruption: although the
applicant or patentee on record ceases to exist and
thereby loses his party status, the authorisation of
the representative does not terminate so that the
latter now immediately represents the successor in law
and can validly act in the proceedings. This
legislative mechanism would be seriously undermined if
Rule 20(3) EPC were to be applied in the context of
universal successions.

12. The board concludes that, when an applicant or patentee

ceases to exist, his universal successor in law
immediately and automatically acquires the party status
in proceedings pending before the EPO. Since SDLO was,
as of 4 September 1998, the successor in universal
title of SIDD, it automatically became party to the

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opposition proceedings on that date. No interruption of

the proceedings occurred (Rule 90(1)(a), second
sentence, and Rule 101(7) EPC). Since the opposition
division was not informed of the change, it continued
to use the old name of the legal predecessor of SDLO as
designation of the proprietor. So did the
representatives. This, however, only amounts to a wrong
designation of the true party; it does not have the
consequence that procedural acts which occurred after
the change were made on behalf of or against a legal
person who had ceased to exist. Thus, SDLO was the true
party to the proceedings when the appealed decision was
given and was adversely affected by it.

13. It follows from the above that the appeal of

appellant I can only be considered admissible if it was
filed by SDLO. In the notice of appeal and the grounds
of appeal, the name of the appellant was indicated as
Stichting Centraal Diergeneeskundig Instituut. Thus,
the appellant was designated by the old name of the
predecessor of SDLO that had already wrongly been used
during opposition proceedings before the first-instance
department as the name of the proprietor.

14. According to the established case law of the boards of

appeal, a wrong designation of the appellant in the
notice of appeal or in the grounds of appeal may be
corrected either under Rule 65(2) EPC (see T 97/98, OJ
EPO 2002, 183, point 1.3; T 715/01 of 24 September 2002,
points 1-11) or under Rule 88 EPC (see T 814/98 of
8 November 2000, point 1; T 460/99 of 30 August 2001,
point 1). In decision T 97/98, the then competent board
considered that there was also a deficiency in the
indication of the name and address of the appellant

1384.D
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within the meaning of Rule 65(2) in conjunction with

Rule 64(a) EPC when incorrect indications had been made.
The view was expressed that nothing in the said rules
allowed them to be applied only to certain kinds of
deficiencies and as a matter of principle not when the
correction of a wrong indication led to a different
person to the one originally expressly named in the
appeal having to be regarded as the appellant. It was
stated that what was required under Rules 64(a) and
65(2) EPC was that there was indeed a deficiency, ie
that the indication was wrong, so that the correction
only expressed what was intended when the appeal was
filed.

15. In the present case, the board is convinced that it was

the intention of the representative of appellant I to
file the notice of appeal and the grounds of appeal on
behalf of that person who had party status as
proprietor during the opposition and who was adversely
affected by the appealed decision. The use of the old
name of the legal predecessor of SDLO amounted to an
objectively incorrect designation of the proprietor
which, however, can be easily explained by the fact
that the same incorrect designation was already used in
the opposition proceedings before the first-instance
department and in the appealed decision itself. Under
these circumstances, the requested correction of the
name of appellant I in the notice of appeal and in the
grounds of appeal can be allowed. To decide otherwise
would not only be overly formalistic, but would also
undermine the procedural mechanism provided for in
Rule 90(1)(a), second sentence, and Rule 101(7) EPC. As
shown above, this mechanism ensures that in cases of
universal succession a representative may continue to

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act in proceedings pending before the EPO. The

mechanism works even if the representative does not yet
know the identity of the successor in law (who in the
event of death of a natural person may be uncertain for
a considerable period of time) and even if the
representative is not informed about the fact itself
that a succession in law has occurred. Thereby
procedural efficiency is also increased in so far as a
representative does not need to ascertain himself every
time before acting in the proceedings whether or not a
succession in law has occurred. This mechanism would be
seriously damaged if a representative who designates
the appellant by the name of the applicant or patentee
on record who has already ceased to exist rather than
by the name of the successor in law could not correct
this objectively wrong designation.

16. The board concludes that the requested correction is to

be allowed. Thus, the appeal of appellant I was filed
on behalf of SDLO which was adversely affected by the
appealed decision. Therefore, the appeal of appellant I
is admissible.

Rule 57a EPC

17. The main request of appellant I contains a separate set

of claims for ES/GR. Appellant II has argued that for
this reason the request does not comply with Rule 57a
EPC.

18. Rule 57a EPC provides that, without prejudice to

Rule 87 EPC, the description, claims and drawings may
be amended in opposition proceedings, provided that the
amendments are occasioned by grounds for opposition

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specified in Article 100 EPC, even if the respective

ground has not been invoked by the opponent.
Appellant I has justified the filing of separate claims
for ES/GR with the argument that a number of claims as
granted might be ineffective in Spain and Greece since
the reservations made by both contracting states under
Article 167(2)(a) EPC were still in force at the date
of filing the application. In fact, the application
leading to the patent in suit was filed on 5 June 1992,
while the respective reservations only ceased to have
effect after 7 October 1992. It follows from
Article 167(5) EPC that the reservations apply to
European patent applications filed during the period in
which the reservations have effect and that the effect
of the reservations continues for the term of the
patent.

19. The possible invalidity of a European patent in a

contracting state is as such not a ground for
opposition under Article 100 EPC. However, Rule 57a EPC
is not limited to grounds of opposition strictu sensu.
This follows from its explicit reference to Rule 87 EPC.
According to the latter provision, a European patent
may contain a separate set of claims for a contracting
state inter alia where a prior national right under
Article 139(2) EPC exists. Thus, although such prior
national rights are not contained in the state of the
art under Article 54(3) EPC and cannot support a ground
for opposition under Article 100(a) in connection with
Article 54 EPC, the applicant or proprietor may take
them into account by means of a separate set of claims
for the respective state.

1384.D
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20. The EPC does not contain an explicit provision for the
corresponding situation where an applicant or
proprietor wishes to take into account the reservation
made by an EPC contracting state under Article 167(2)(a)
EPC. Nevertheless, it has been the established practice
of the EPO from the very beginning to accept the filing
of separate sets of claims for such contracting states
(see Announcement, OJ EPO 1979, 289, in respect of
Austria, and Legal Advice No. 9/81, OJ EPO 1981, 68, No.
9). This practice was confirmed by the Enlarged Board
of Appeal in its decision G 7/93 (OJ EPO 1994, 775), in
which it dealt with the question of whether amendments
can be allowed at a very late stage of the examination
procedure. In point 2.5 of the reasons, the following
was stated: "Nevertheless, in the Enlarged Board's view,
a clear example of an exceptional case when it may be
appropriate to allow amendment, is when the applicant
requests separate sets of claims to be substituted in
respect of designated States that have made
reservations under Article 167(2) EPC. In such a case
no further substantive examination of the case may be
required, and any short delay caused by making the
necessary amendments is then of little weight, compared
to the importance to the applicant of obtaining a valid
patent in such designated States." (emphasis added)

21. The general purpose of Rule 57a EPC is to allow

amendments only where they are made to overcome an
objection against the validity of the European patent.
If follows from the reference to Rule 87 EPC that,
within the framework of the centralised opposition
procedure before the EPO, amendments are also to be
allowed where the patentee intends to overcome a
possible ground of invalidity which only exists in

1384.D
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respect of a particular contracting state. Thus,

Rule 57a EPC is not infringed by the formulation of a
separate set of claims for a contracting state in which,
due to a reservation made under Article 167(2)(a) EPC,
certain product claims as granted would be considered
invalid or ineffective. The same view is expressed in
the Guidelines for Examination in the EPO (see point D-
VII, 4.4). The board therefore concludes that the main
request complies with Rule 57a EPC.

Article 123(3) EPC

22. Appellant II has argued that the filing of a separate

set of claims for ES/GR would infringe Article 123(3)
EPC since the product claims as granted were
ineffective in Spain and Greece in view of the
reservations made under Article 167(2)(a) EPC.

According to Article 123(3) EPC, the claims of a

European patent may not be amended during opposition
proceedings in such a way as to extend the protection
conferred. By means of the separate set of claims,
appellant I has amended several product claims as
granted to method claims for contracting states ES and
GR. Generally, a change from a product claim to a
method claim for the production or the use of the
product does not extend protection (see G 2/88, OJ EPO
1990, 93, point 5). The argument of appellant II that
competitors could expect the product claims to be held
invalid and non-enforceable in contracting states ES
and GR is of no relevance in the context of
Article 123(3) EPC since the comparison between the
claims as granted and the claims as amended always has
to be made without considering the possible invalidity

1384.D
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of the claims as granted. The board therefore concludes

that the main request complies with Article 123(3) EPC.

Article 123(2) EPC

23. The wording "comprising isolating said Lelystad Agent

from a sample taken from affected piglets or affected
sows or experimentally infected SPF pigs, or from cells
inoculated with said sample" in claim 1 for ES/GR has a
basis on page 5, lines 5-8 and lines 30-31; page 12,
lines 13-31; page 13, lines 22-32; page 14, lines 13-15;
page 22, line 23, to page 24, line 25, of the PCT
application as filed. All these passages will be taken
by the skilled person as general instructions for
isolating the Lelystad Agent from various samples.
Therefore, no case of added subject-matter has been
made out for claim 1 for designated states ES and GR.

Article 83 EPC

24. The disclosure of the patent, in appellant II's view,

is insufficient for obtaining an inactivated (killed)
Lelystad Agent vaccine according to claim 4.

However, the patent in suit teaches how to prepare the

killed Lelystad Agent by conventional techniques (see
eg page 6, lines 28-33).

That the claimed killed vaccines are able to confer

sufficient protection or at least some degree of active
immunity is shown by Example 3 of document (D36) which
is appellant II's own application (see eg page 33,
line 1, to page 35, line 20). These killed vaccines are
also made by conventional techniques as described in

1384.D
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the patent in suit.

Therefore, the subject-matter of claim 4 is

sufficiently disclosed and, thus, it does not violate
the requirements of Article 83 EPC.

Article 87(1) EPC - priority

25. The patent in suit is derived from Euro-PCT application

PCT/NL92/00096 in which a first priority of 6 June 1991
was claimed in respect of European application
No. 91201398. According to Article 8(2)(a) PCT, the
conditions for, and the effect of, any priority claim
declared in an international patent application are as
provided in Article 4 of the Paris Convention for the
Protection of Industrial Property (Stockholm Act).
However, since the Paris Convention does not address
the issue of so-called "internal priorities" (see below
point 26), the above principle is subject to the
provisions of subparagraph (b) of Article 8(2) PCT
which, in its second sentence, states the following:
"Where, in the international application, the priority
of one or more national applications filed in or for a
designated State is claimed, ... the conditions for,
and the effect of, the priority claim in that State
shall be governed by the national law of that State".
The term "national application" also includes
applications for regional patents and the term
"national law" is to be construed, where a regional
application or regional patent is involved, as a
reference to the respective regional treaty (see
Article 2(vi) and (x) PCT). Thus, in the present case,
where a Euro-PCT application claims the priority of a
European patent application, the conditions for, and

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the effect of, the priority claim are governed by

Articles 87 to 89 EPC.

26. According to the basic rule contained in Article 87(1)

EPC, a person who has duly filed in or for any State
party to the Paris Convention, an application for a
patent shall enjoy, for the purpose of filing a
European patent application in respect of the same
invention, a right of priority. In view of its broad
wording and in view of Article 87(2) EPC, which
recognises applications under the EPC as giving rise to
a priority right, the provision also applies where the
priority claim is to a previous national application
filed in a designated EPC contracting state or to a
previous European application (cf Guidelines for
Examination in the EPO, C-V, 1.3; BGH GRUR 1982, 31 =
OJ EPO 1982, 66, point II 3). The European legislator
has thus adopted a priority system which also
recognises "internal priorities" and thereby extends
beyond the minimum standards of the Paris Convention
which only regulates "external" priorities.

27. Appellant II has contested the validity of the first

priority claim of the patent in suit. It argues that
the priority right was exhausted at the filing date of
Euro-PCT application PCT/NL92/00096 (5 June 1992),
since the same priority had already been claimed in
European patent application No. 92200781 filed on
18 March 1992, ie in that application from which the
patent in suit claims a second priority.

28. The argument of Appellant II is based on the "doctrine

of exhaustion of priority rights", namely on the legal
proposition that a priority right which has been

1384.D
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claimed in a patent application is thereafter exhausted

and cannot be claimed any more in a later patent
application in or for the same territory. Although some
support for this doctrine may be found in national case
law (cf Cour de Montpellier of 20 December 1966, Ann.
1967, 7 ff. = GRUR Int. 1969, 198) and in the legal
literature (Mathély, Le nouveau droit français des
brevets d'invention, 1991, p. 597 ff.; Mousseron,
Traité des brevets, 1984, p. 327; Wieczorek, Die
Unionspriorität im Patentrecht, 1975, p. 183 ff.), it
cannot be considered to be unanimously or even widely
recognised. Most legal commentators, in so far as they
address the doctrine at all, express clear reservations
against it (cf eg Busse, Patentgesetz, 6th ed. 2003, §
41, point 23 with further references; Goebel, GRUR 1988,
243, 244; Gramm, GRUR 1980, 954, 957; Ruhl,
Unionspriorität, 2000, p. 96; Schulte, Patentgesetz mit
EPÜ, 6th ed. 2001, § 40, point 19).

29. Until very recently, the doctrine of exhaustion of

priority rights has, to the knowledge of the board,
never been applied or explicitly addressed in the
practice of the examining or opposition divisions of
the EPO or in the case law of the boards of appeal. The
Guidelines for Examination in the EPO do not mention
the issue at all in their passages relating to priority
(A-III, 6, and C-V). However, in decision T 998/99 of
15 September 2003 (point 3.1 of the reasons), the
competent board of appeal considered the doctrine to be
applicable and held that it was not allowable to claim
priority from a first filing for more than one
application in the same state and in respect of the
same invention. The decision has caused controversial
reactions, as shown in the legal literature (cf eg

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contra: Bremi/Liebetanz, Mitt. 2004, 148 ff.; pro:

Vigand, Prop.ind. 2004, 16).

30. As acknowledged by the board in T 998/99, the EPC is

silent on whether or not it is possible to claim the
same priority for more than one application filed for
the same state. Pursuant to Article 87(1) EPC, the
priority right is enjoyed for the purpose of filing a
European patent application in respect of the same
invention (in the German version: "für die Anmeldung
derselben Erfindung zum europäischen Patent", in the
French version: "pour effectuer le dépôt d'une demande
de brevet européen pour la même invention"). With
respect to the issue of exhaustion of priority, this
wording appears to be open to different interpretations.
The board therefore has to consider which
interpretation fits better into the priority system of
the EPC as a whole, taking duly into account the
interests involved.

31. Articles 87 to 89 EPC provide a complete, self-

contained code of rules on claiming priority for the
purpose of filing a European patent application (G 3/93,
OJ EPO 1995, 18, point 4; G 2/98, OJ EPO 2001, 413,
point 3; G 2/02, OJ EPO 2004, 483, point 3.1). Since
the EPC constitutes, according to its preamble, a
special agreement within the meaning of Article 19 of
the Paris Convention, these rules are not intended to
contravene the basic priority principles of the Paris
Convention.

32. The right of priority is generally regarded as one of

the cornerstones of the Paris Convention and was
already incorporated in the original text of 1883 (cf

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Bodenhausen, Guide to the Application of the Paris

Convention for the Protection of Industrial Property as
Revised at Stockholm in 1967, 1969, Article 4, Section
A(1), point (a); Ladas, Patents, Trademarks, and
Related Rights, Vol. I, 1975, p. 456). Its basic
purpose is to safeguard, for a limited period, the
interests of a patent applicant in his endeavour to
obtain international protection for his invention,
thereby alleviating the negative consequences of the
principle of territoriality in patent law.

33. In the course of the revisions of the Paris Convention,

several amendments were made to its priority provisions
in order to enhance their flexibility and thereby
ameliorate the legal position of patent applicants. It
was considered that overly strict solutions would
hardly be in accord with the spirit of the Union treaty
which is aimed at fostering and encouraging inventive
genius (cf Actes de la Conférence réunie à Washington
du 15 mai au 2 juin 1911, Berne 1911, p. 45). In
particular, the Paris Convention in its present version
(Stockholm Act) explicitly recognises the possibility
of claiming multiple and partial priorities (cf
Article 4F) and guarantees the right to divide patent
applications while preserving the benefit of the right
of priority also for the divisional application (cf
Article 4G Paris Convention). The same principles are
reflected in the corresponding provisions of the EPC,
ie Articles 76(1), second sentence, and 88(2) and (3).

34. In the light of the above, the board disagrees with the
view expressed in decision T 998/99 (point 3.1),
according to which the international priority
provisions contained in the Paris Convention have to be

1384.D
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regarded as a body of exceptional rules which should be

interpreted strictly. Rather, they have to be construed
in a manner which ensures that the general purpose they
serve, namely to assist the applicant in obtaining
international protection for his invention, is
fulfilled as far as possible. The same holds true a
fortiori for the self-contained priority system of the
EPC which has to be compatible with the standards set
by the Paris Convention in the sense that it should not
give less protection, but which is not generally
prevented from going beyond these standards in favour
of the applicant. This is illustrated inter alia by the
recognition of internal priorities under the EPC (cf
above, point 26), a circumstance which also has a
bearing on the solution of the present issue (cf below,
point 38).

35. In order to ascertain whether a practical need exists

for allowing applicants to claim the same priority
right in more than one European patent application, the
board considers it appropriate to examine more closely
the circumstances under which the issue may arise. The
following types of situation can be identified:

36. First, an applicant may split up the subject-matter of

the priority application between two subsequent
European applications, eg in order to avoid a non-unity
objection in the European examining procedure. If, in
such a case, the applicant were only entitled to rely
on the priority in his first subsequent application, he
would lose the priority for that part of the subject-
matter contained in the second subsequent application.
This stands in clear contrast to the result the
applicant would have achieved if he had at first filed

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a European application containing the whole subject-

matter of the priority application and later a
divisional application containing only a part of the
subject-matter. Since both Article 4G Paris Convention
and Article 76(1), second sentence, EPC explicitly
recognise that a divisional application enjoys not only
the filing date of the parent application but also the
benefit of any right to priority (cf above, point 33),
both the parent application and the divisional
application would then validly claim the priority right.
The board does not see any convincing reason for not
allowing the applicant to achieve the same result by
immediately dividing the subject-matter of the priority
application between two separate European applications
both claiming the priority right for the respective
part of the subject-matter. This speaks against the
application of the doctrine of exhaustion in such cases
of "divided priority". Even in decision T 998/99 the
then competent board expressly reserved its position on
the issue of divided priorities (cf point 3.1. of the
reasons).

37. Secondly, it may occur that a patent applicant who has

claimed a priority right realises before the expiry of
the priority period that his application suffers from a
major deficiency. If the applicant is allowed to rely
on the same priority in a second European application,
he could still remedy the situation by a second filing,
it being understood that the deficient application will
then normally be withdrawn or abandoned through non-
action. However, if the doctrine of exhaustion had to
apply, this means of redress would cease to exist.

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38. Thirdly, and most importantly, technological

development is characterised by a process of innovation
and research which does not usually come to a halt when
a first application is filed. Therefore, patent
applicants may wish to combine the originally disclosed
subject-matter with further improvements and additional
embodiments developed during the priority period within
one and the same application. The patent system of the
EPC encourages such a filing strategy through the
recognition of internal priorities: an applicant may
file a second European application disclosing both the
subject-matter of a first European application (for
which he may claim and enjoy priority) and newly found
related subject-matter. There may also be good reasons,
in particular in technology fields where the pace of
innovation is fast, to repeat this strategy more than
once and to file a third or even further European
application within the priority period, always claiming
the priority of all the previous applications. It is
difficult to see why the EPC should, on the one hand,
encourage such a "combination strategy" - if the
applicant makes use of it only once - by the
recognition of internal priorities and, on the other
hand, restrict it - if the applicant makes use of it
twice or more - by the doctrine of exhaustion.

39. It might be argued that notwithstanding the above

considerations the doctrine of exhaustion of priority
rights should be applied on the ground that it serves
the function of preventing double-patenting. However, a
closer analysis reveals that the doctrine is not an
appropriate legal instrument for achieving this purpose.
On the one hand, the possibility of double-patenting
may also arise in situations where no priorities are

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claimed or where legal provisions such as Article 76(1),

second sentence, EPC prevent the application of the
doctrine of exhaustion of priority. On the other hand,
the doctrine is detrimental to patent applicants even
in situations where no risk of double-patenting exists,
eg because only one application is still pending and
the other application or applications have already been
withdrawn or are deemed to be withdrawn.

40. Although none of the parties has sought to refer the

issue of exhaustion of priority rights to the Enlarged
Board of Appeal, the board has considered whether it
should do so of its own motion pursuant to
Article 112(1)(a) EPC. However, such a referral should
only be made if it is required for ensuring uniform
application of the law or for settling an important
point of law. As already stated above (point 29), the
board is not aware that the doctrine of exhaustion of
priority rights has ever been applied or explicitly
addressed in the first-instance practice of the EPO or,
with the exception of decision T 998/99, in the case
law of the boards of appeal. Under these circumstances,
a decision of the Enlarged Board is, for the time being,
not necessary for the purposes set out in Article 112
EPC.

41. The board concludes that the priority system of the EPC
allows patent applicants to claim and enjoy the same
priority right in more than one European application.
The doctrine of exhaustion of priority rights is to be
rejected. Thus, the patent in suit is entitled to the
first priority claimed. It follows that documents (D6),
(D8) and (D9) do not represent prior art under
Article 54(2) EPC.

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Novelty
Document (D24)

42. Appellant II argues that the method used for isolation

of the causative agent of MSD in document (D24) and in
the patent in suit could only yield the same virus, be
it named "Lelystad agent" or "myxo-like virus". However,
the "myxo-like" particles of document (D24) have a size
of 130-200 nm as observed by EM (see page 41,
lines 14-16), whereas the claimed Lelystad Agent is at
least three times smaller, ie it has a size of 45-55 nm
as observed by EM (see patent in suit, page 13,
lines 8-11). Moreover, the claimed Lelystad Agent
belongs to the genus of Arteviridae (see document (D22),
page 3, lines 15-16), ie a genus different from
Myxoviridae.

43. It is true that both methods (document (D24) and the

patent in suit) use lung macrophages of pigs suffering
from MSD as a virus source. However, the fact that both
the "myxo-like" virus of document (D24) and the claimed
Lelystad Agent have a trophism for lung macrophages
cannot be seen as proof of identity between the two
viruses, as many viruses infect lung macrophages, eg
the Aujeszky's disease virus referred to in document
(D4), which induces a completely different clinical
symptomatology. Finally, post-published document (D6),
taken as expert opinion, shows that many virus isolates
from pigs suffering from MSD were able to infect
macrophages, but only one (ie the claimed Lelystad
Agent) was sensitive to chloroform (cf page 125, under
"Virus isolation"). This shows that the skilled person
applying the method of document (D24) would not

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necessarily arrive at a virus falling under the

definition of claim 1 at issue, contrary to
appellant II's position.

Documents (D1) and (D7)

44. The authors of these documents demonstrated that some

signs (eg microscopic lesions) of MSD could be observed
upon infecting pigs with the filtered homogenates.
However, it was only with the unfiltered homogenate
(comprising micro-organisms much larger than viruses
such as bacteria) that the complete pathological
situation of MSD, including respiratory disease and
reproductive failure could be produced (see document
(D7), pages 47, under 2, and Fig. 5). These documents
thus merely show that the whole clinical symptomatology
of MSD could be reproduced upon experimental infections
with homogenates containing a great many micro-
organisms. They do not teach the skilled person how to
identify and isolate the causative agent of MSD.
However, a critical feature of claim 1 at issue is that
the virus should be arrived at in an isolated form (see
section IV supra). Therefore, documents (D1) and (D7)
do not affect the novelty of claim 1 at issue.

45. Consequently, claim 1 and all claims of the new main

request, including those for contracting states ES and
GR, relying on the isolated Lelystad virus, fulfil the
requirements of Article 54(1) EPC.

Inventive step

46. In view of the board's finding under point 41 supra,

the prior art to be considered is represented by (D24),

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(D7) and (D1). Appellant II argues that the skilled

person wishing to find the causative agent of MSD would
arrive at the claimed subject-matter in an obvious
manner departing from documents (D24), (D7) and (D1)
taken alone or in combination. Document (D24) teaches
(see page 43, third paragraph, lines 1-3) that a
plethora of micro-organisms (listed under the heading
"Virus and mycoplasma isolation") could be isolated
from cases of MSD: porcine Enterovirus serotype 7 (PEV),
Encephalomyocarditis virus (EMCV), "myxo-like"
particles of 130-200 nm diameter, Mycoplasma
hyosynoviae, Acholeplasma laidlawii and probably
Mycoplasma hyopneumoniae. The Lelystad Agent is not
among the aetiologies identified. There is also no
pointer that some of them, let alone the "myxo-like"
virus, is the likely candidate for the cause of the
disease. Rather, the "myxo-like" virus would have been
excluded by the person skilled in the art as a
candidate causing MSD on the basis of the disappointing
seroconversion data. Moreover, the authors of this
document admit that the results "were just as
inconclusive" as those of others (see page 44, second
paragraph). Therefore, document (D24) provided the
skilled person with no guidance on how to solve the
problem of finding the causative agent of MSD.

47. The board is of the opinion that the skilled person

would agree to the above negative conclusion arrived at
by the authors of document (D24). But even if, for the
sake of argument only, the skilled person concluded
that the new "myxo-like" virus was the most likely
causative agent of MSD, as appellant II argues, there
is no evidence before the board that the whole clinical
symptomatology of MSD could be induced upon

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experimental infection using the "myxo-like" isolate.

Moreover, as emphasised in point 43 supra, the skilled
person entering the "myxo-like" route would not
necessarily arrive at something falling under the
definition of claim 1.

48. Departing from document (Dl) or combining the teaching

of document (D24) with that of document (Dl) would not
provide the guidance towards the claimed Lelystad Agent
missing in document (D24), as the skilled person was
presented, on the one hand, with a list of a great many
MSD aetiologies, wherein the Agent in question was
glaring by its absence (document (D24)), and, on the
other hand, with the homogenates of document (D1),
including no fewer micro-organisms.

49. If the skilled person looking for the causative agent

of MSD came across document (D7), he was taught that
the authors of this document had to refrain from
filtering their homogenates to reproduce the clinical
signs of MSD. As already highlighted (see point 43
supra), filtering abolished the possibility of
reproducing the complete pathological frame of MSD,
including respiratory disease and reproductive failure
(see document (D7), pages 47, under "2", and Fig. 5).
The skilled person, aware of the fact that bacteria do
not pass through the filters of 0.45, 0.22 or 0.1 µm
pore diameter referred to on page 47, second paragraph,
of document (D7), would conclude from the experimental
results of document (D7) that bacteria, or even larger
micro-organisms, in the unfiltered homogenate were
perhaps necessary to reproduce the prominent clinical
signs of MSD experimental infections. Thinking that
bacteria were essential, the skilled person would have

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used technologies from bacteriology and would have

missed the filterable (see patent in suit, page 13,
lines 2-4) causative agent of MSD.

50. It is argued by appellant II that others (see eg

document (D6) or (D8)) were able to reproduce the
teaching of document (D24) and easily isolate the virus
responsible for MSD. However, this position of
appellant II is not convincing since document (D24)
does not anticipate any critical feature of the virus
looked for, such as its buoyant density of 1.19 g/cm3 in
CsCl or its sensitivity to chloroform treatment (see
document (D6), page 125), the knowledge of which could
indeed have greatly facilitated the isolation of the
Lelystad Agent. In fact, the authors of document (D8)
rely inter alia on these features (known to them from
reference "14", ie document (D6)) to isolate the virus
(see document (D8), page 707, end of the central
column). The board must conclude that finding this
Agent in the light of the information derivable from
document (D24) required more than routine work.

51. In conclusion, the subject-matter of claim 1 cannot be

derived in an obvious manner from the prior art. This
conclusion has to be extended to all the claims of the
new main request, including those for contracting
states ES and GR, since they all rely on the inventive
Lelystad Agent of claim 1.

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Order

For these reasons it is decided that:

1. The appeal of appellant I is admissible.

2. The decision under appeal is set aside.

3. The case is remitted to the first instance with the

order to maintain the patent on the basis of the claims
of the new main request filed during oral proceedings,
and a description to be adapted.

The Registrar: The Chairwoman:

P. Cremona U. M. Kinkeldey

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