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Thursday, 13 August 2009

Reach-though claim goes somewhat lame

Still recovering from an eye infection that left him unable to blog for several days, IPKat team member Jeremy is still playing catch-up with both his incoming mail and that of the Kat -- so if you've emailed him and recently and have either received (i) no reply or (ii) not much of a reply, please don't take it personally. One piece of mail that he would have liked to attend to more diligently came from Drshok (not sure how to pronounce that one), who writes:
"Did I miss your report [no ... I did] on the recent EPO Board of Appeal decision T-1063/06, which for the first time explicitly rejects reach-through claims?

If you haven't seen it yet, take a look [I did]. It is in German but don't let that put you off [I didn't]. It's a good one".
For old time's sake I ran the headnote through Babel Fish. I really enjoyed the bit about "... a formulation of requirement, after which give upful defined chemical compounds with application of a regulation procedure in form of a new research tool ...", but I felt quite give-upful myself at that point. Salvation was however at hand, in the form of Axel H. Horns of IP:JUR fame. Responding nobly to a pathetic Tweet, Axel first recited the usual disclaimers about this not being his area of expertise, then offered the following translation of the independent claim 1 of the contested application:
"1 Use of compounds for production of pharmaceuticals for treatment of cardiovascular diseases like Angina pectoris, ischaemia, and cardiac insufficiency, the compounds being able to stimulate soluble Guanylatcyclase independent of a haem group present in the enzyme."
Adds Axel (to whom the IPKat is immensely grateful),
"As far I have browsed and/or understood the decision, the applicant has actually expended very little effort in indicating which compounds might in actually fall withn this claim, in terms of the intended effect. Hence, the Board argues, the skilled expert would, having read the patent, still need to do a complete research programme in order to find that out.

It appears to be a case of bad claim drafting: The wording merely appears to reflect the fantasy of an employee at Bayer Schering Pharma Aktiengesellschaft, desperately eager to cover each and every solution to the objective of stimulating some enzyme but who has no idea as to which compounds in particular might be suitable to do so the trick. They have tried to 'cheat' the patent system: without having done the real work -- researching compounds which are suitable -- theyhave just stated an open objective, dressed as a reach-through claim. The Board recognised this very clearly and therefore smashed the application".


Anonymous said...

Good post :)

Anonymous said...

This decision will be published in the OJ soon, presumably in English and French. In typical EPO fashion, there is at least one TBA decision (and many granted patents) that take the opposite line...

Naoise said...

Summary of the case in English to be found here:

MaxDrei said...

It is not just "EPO fashion" to have conflicting decisions is it, Anonymous. Isn't it inherent in all civil law (as opposed to English common law) jurisdictions?

Anyway, I had thought it a strength of EPO jurisprudence, that 24xTBA vie for being the creator of the most durable, elegant and fairest legal line of reasoning. Work in progress, proof of the by now 30 year old pudding, Darwinian competition, and survival of the fittest legal line, and all that sort of thing?

Did England do it any better, in the era before Judge Leonard Hoffmann arrived?

Anonymous said...

I didn't say anything about England. Or Ireland for that matter. You pick the case that suits the panel, that's my point.

Anonymous said...

Isn't this decision fully consistent with accepted ideas about European patent law (and patent law in general)? You can't claim stuff you haven't disclosed (or even invented).

I'd say it's not so much the formulation of the claim as it is the lack of correspondence between claim scope and disclosure.

Sure there will be many granted patents that go against this decision, but I'd be interested in TBA decisions that take an opposite line.

MaxDrei said...

"You pick the case that suits the panel, that's my point."

Sorry Anonymous for being so dim, but I don't understand. Who is it that "picks" what "case" to "suit" which "panel": those who pick decisions for publication in OJ EPO, or what?

Anonymous said...

Any functionally (as opposed to structurally) defined feature covers "stuff you haven't disclosed (or even invented)". In the medical field, you see lots of claims like use of X plus an anti-allegic agent to treat Y. That allows you to cover any as-yet-undiscovered anti-allegic acid in combination with your X. Where do you draw the line?

Anonymous said...

Functional definitions are a problem in the area of patenting in chemistry and pharmaceuticals. Reach-through claims are a sub-set of this kind of definition. The problem arises for technical reasons, because in other technical areas the structure of a product usually defines its use. For example a jet engine which is defined in terms of its technical components, by virtue of its technical nature, implies a particular function (providing power to an aircraft). In chemistry, however, the structure of a chemical compound does not imply its function. When presenting a chemist with the chemical structure of a compound, it is not possible to determine all of its possible functions. Turning this on its head, providing the skilled person with a function does not imply any particular chemical structure. This goes double for reach-through claims, because they relate to definitions in terms of new biological targets (enzymes or receptors).

This problem is relevant to the problem of reach-through claims because, aside from support, clarity and disclosure problems under Articles 83 and 84 EPC, it can also give rise to problems of a lack of novelty. For example, an inventor discovers a new biological receptor or a new enzyme which exists in nature and is implicated in a particular disease of series of diseases. He then files a patent application in which he formulates a reach through claim to compounds which inhibit or activate that new receptor and as a result, which treat that disease or series of diseases.

The problem then arises, assuming that the receptor or enzyme discovered by the inventor is new to science, it cannot be ascertained with certainty whether or not any existing chemical compounds inhibit or activate that receptor or enzyme and so whether or not they fall within the scope of that reach-through claim, because no tests could have been done in the prior art on this because the receptor or enzyme was not known.

One way to prove a lack of novelty of a reach-through claim with certainty, is to perform tests on known compounds to see if they fulfill the function specified in that claim (inhibition/activation of the new enzyme or receptor). However, patent offices cannot do this, plus where does one start - usually with known compounds which are known to treat the particular diseases associated with the new receptor or enzyme. Alternatively, in certain cases, applicants themselves perform tests on known compounds in their own application which demonstrate that known compounds in fact fulfill the function specified in the reach-through claim and so themselves demonstrate that this claim lacks novelty. If, however, the applicant only tests new compounds on his new receptor/enzyme, then the patent office can sometimes prove a lack of novelty where literature published after the filing date of the application demonstrates that compounds known before the filing date/valid priority date also fulfill the function used to define the compounds in the reach-through claim and thus demonstrate that compounds known before the filing/priority date of the application fall within the scope of that claim.

On the whole, it is difficult to justify this kind of formulation, because, as indicated above, it goes against the spirit of the law in the sense that the solution to the technical problem is not disclosed. It is an invitation to conduct a research program, nothing more. Let us hope that this decision is the first in a series of decisions giving a strong body of mutually consistent case law.

MaxDrei said...

Great comment from the Anonymous just above. Reminds me of a related aspect of the jurisprudence of patent claims directed to "Molecule X" ie what is called in Germany "absolut Stoffschutz" (absolute protection for chemical compounds). Just because you can show that obvious-in-itself, but nevertheless "new" Molecule X is a cure for baldness, why should you as a reward get 20 years of monopoly for molecule X, when used in every other use including, say, in engine oil?

I think the present very dangerous leaching away of support for a patent system could be staunched if the courts were more diligently to confine inventors to a scope of protection which is limited to what their contribution to society justifies ("commensurate" as the EPO has it).

Absolut Stoffschutz has been in place since the 1960's. Bearing in mind the power of the pharma lobby, I guess its early removal is too much to hope for. Mind you, Microsoft might be happy to see scope of protection screwed down tighter.

Anonymous said...

Re the issue of absolute protection for chemical compounds, this is certainly a part of the current legal landscape. In fact until 1992, Greece and Spain had entered reservations preventing the patenting of chemical and/or pharmaceutical products in respect of these states under Art.167 EPC_1973 (Austria had the same reservation until 1987). However, the possibility of entering such reservations when acceding to the EPC was removed when Art.167 EPC was deleted in the EPC_2000 revision. Consequently, the trend is clear in this regard.

Until 1992, the EPO would allow the applicant according to Rule 87 EPC_1973 to file a separate set of claims for these states (an allowable derogation from the requirements of Art.118 EP_1973), whereby that separate set of claims would avoid the claiming of such products in respect of these states. However, as far as the EPO was concerned, this was not a requirement of the EPC. This possibility no longer exists under the EPC_2000.

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