European biotech patent case law webinar catch up
In our July 2018 patent biotech webinar, we provided an update on important recent decisions from the EPO Boards of Appeal.
Could an information leaflet and consent form distributed to prospective participants in a clinical trial be prejudicial to the patentability of a second medical use claim? This case highlights the all-important need to consider the timing of filing a patent application in order to balance the plausibility of the claimed medical use with a potentially prejudicial disclosure. The rarity of the condition to be treated, the availability of a pre-clinical model for that condition and the structural similarity of the compound to known drugs for the same indication are all considered as factors in determining the presence or absence of an inventive step.
The Board of Appeal concluded that, for consistency, the concept of partial priority must also apply in assessing which application is the “first application” in relation to a priority claim. Based on this concept, a disclosure in a priority application that encompasses alternative subject matter may be conceptually divided into parts, and hence earlier filings by the same applicant may be considered to be the “first application” for any of those parts that they disclose, thus invalidating the priority claim. The impact of this decision on filing strategies should be carefully considered: addition of alternative subject matter to the scope of an existing application (for example, by extension of a range) might not give rise to a new priority date for the whole scope.
Under which circumstances would the preamble of a method claim (“method for doing X”) be interpreted as a limiting feature of the method? The Board of Appeal concluded that in the context of a method claim, it is important to differentiate between different types of purpose claimed, namely those that define the application or use of a method, and those that define an effect arising from the steps of the method and implicit therein. If the purpose defines the specific application of the method, certain additional steps are required which are not implied by or inherent in the other remaining steps defined in the claim, and without which the claimed process would not achieve the claimed purpose.