|Traditional analysis tools - not fancy enough for patent folks?|
Given that November in Karlsruhe is very much alike November in the rest of Europe, our readers might find it not very surprising that the Xth senate of the BGH was very much interested in cough syrup the last days.
Cough syrup smells like eucalyptus and citrus fruits ever since this blogger can remember. It is therefore more surprising by far that the EPO has granted a patent in 2004 with a claim 1 reading: “A pharmaceutical composition for administration in the form of hard or soft gelatine capsule comprising eucalyptus oil and orange oil.”
Gelomyrtol, a product that smells like eucalyptus and orange oil, was available in the form of capsules long before the filing date of the application. Was its composition available to the public?
Well, a simple-minded ordinary man would say if it smells like eucalyptus and orange oil then it contains eucalyptus oil and orange oil. What else?
The official pharmaceutical description (“Rote Liste”) mentions that Gelomyrtol is a plant extract containing inter alia substances called d-Limonen (which makes up 90% of orange oil), a-Pinen and 1,8-Cineol (the main ingredients of eucalyptus oil).
In the nullity proceedings, the patentee argued that despite of the suspicious scent and the revealing chemically pure ingredients, the mix of essential oils could have been synthesized otherwise than by mixing eucalyptus oil and orange oil such that the composition was not directly and unambiguously derivable for the skilled person (in particular by a skilled person with a stuffy nose, I would like to add).
The senate did not follow this argument – but did not rely on their noses either. Actually the judges did not even mention the fragrance but found that the indications in the pharmaceutical description were sufficient for the skilled person to establish a manageable number of hypotheses on the potential composition, one of which could then be confirmed with the available analysis tools. These tools, again, did not include the nose but rather gas chromatography and mass spectroscopy.
The full decision (XZR 120/11 of October 23, 2012 “Gelomyrtol”) in German language can be accessed here.