tag:blogger.com,1999:blog-5574479.post7732087281579389922..comments2024-03-28T16:45:51.051+00:00Comments on The IPKat: Reach-though claim goes somewhat lameVerónica RodrÃguez Arguijohttp://www.blogger.com/profile/05763207846940036921noreply@blogger.comBlogger11125tag:blogger.com,1999:blog-5574479.post-35723846013693318212009-08-16T13:02:09.497+01:002009-08-16T13:02:09.497+01:00Re the issue of absolute protection for chemical c...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.<br /><br />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.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-91659365137194212312009-08-16T10:29:33.633+01:002009-08-16T10:29:33.633+01:00Great comment from the Anonymous just above. Remin...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?<br /><br />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).<br /><br />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.MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-6698700386322619092009-08-15T13:31:18.130+01:002009-08-15T13:31:18.130+01:00Functional definitions are a problem in the area o...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).<br /><br />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.<br /><br />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.<br /><br />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.<br /><br />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 <i> is </i> 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.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-21393242726383709692009-08-15T08:57:39.189+01:002009-08-15T08:57:39.189+01:00Any functionally (as opposed to structurally) defi...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?Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-39687739079088869412009-08-14T22:20:24.987+01:002009-08-14T22:20:24.987+01:00"You pick the case that suits the panel, that..."You pick the case that suits the panel, that's my point."<br /><br />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?MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-12712716659770580692009-08-14T17:29:43.706+01:002009-08-14T17:29:43.706+01:00Isn't this decision fully consistent with acce...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).<br /><br />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.<br /><br />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.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-45923213604149203672009-08-14T12:14:19.278+01:002009-08-14T12:14:19.278+01:00I didn't say anything about England. Or Irela...I didn't say anything about England. Or Ireland for that matter. You pick the case that suits the panel, that's my point.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-37038126007834305352009-08-14T10:20:02.705+01:002009-08-14T10:20:02.705+01:00It is not just "EPO fashion" to have con...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?<br /><br />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?<br /><br />Did England do it any better, in the era before Judge Leonard Hoffmann arrived?MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-1146944226825026542009-08-14T10:04:36.215+01:002009-08-14T10:04:36.215+01:00Summary of the case in English to be found here:
...Summary of the case in English to be found here:<br /><br />http://www.df-mp.com/english/e_news/news_e.html#blowNaoisehttps://www.blogger.com/profile/03560744054257728872noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-68965597541179343562009-08-13T21:25:49.754+01:002009-08-13T21:25:49.754+01:00This decision will be published in the OJ soon, pr...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...Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-74252749537012439722009-08-13T19:01:30.229+01:002009-08-13T19:01:30.229+01:00Good post :)Good post :)Anonymousnoreply@blogger.com