Thursday, 11 December 2014

Explicilty mentioning the effect won't help

The Decision Human papillomavirus vaccines/GLAXOSMITHKLINE T 1493/09 available here deals with a vaccine composition having various complicated names. No surprise so far.

The main request was rejected as being obvious over the art and the auxiliary request. The obviousness of the auxiliary request is discussed in points 20 - 22 as below (emphasis added):
Claim 1 of [the auxiliary request] differed from claim 1 of the main request in that it is directed to the second medical use of the vaccine composition, i.e. it is directed to a vaccine composition for use in the prevention or treatment of a disorder related to HPV infection, as opposed to the product as such. The appellant stated that this claim type set a higher bar with respect to evidence on the efficacy as a vaccine, in particular requiring evidence of effective protection in humans.

Claim 1 of auxiliary request 1 includes the therapeutic effect ("prevention or treatment of a disorder related to HPV infection") as an explicit feature, while claim 1 of the main request does not. In other words, claim 1 of auxiliary request 1 is directed to a “vaccine composition” characterised in that it comprises VLPs containing HPV-derived proteins which is capable of generating a protective immune response for each HPV L1 protein present in the VLPs in the composition. In the board’s view, the wording of claim 1 of the main request already implies that the claimed composition is an effective vaccine for the treatment of HPV-related disorders. In fact, this effect (the same as the one as explicitly recited in claim 1 of the auxiliary request) was already taken into account by the board when evaluating the inventive step of the subject-matter of claim 1 of the main request (see in particular points 4 to 10 above). Hence, the board considers that the assessment of inventive step for the subject-matter of claim 1 of the main request according to the problem and solution approach set out at point 2 to 19 above
applies to the subject-matter of claim 1 of the auxiliary request without any change in the reasoning.  
The subject-matter of claim 1 of auxiliary request 1 therefore lacks an inventive step for the same reasons as the subject-matter of claim 1 of the main request. The requirements of Article 56 EPC are not fulfilled.
In other words, mentioning the therapeutic effect makes life more complicated in that evidence for its existence may be required but did not help in this case.


Anonymous said...

I've previously debated with someone whether or not the technical effect should be recited in the claim. Sometimes I think it is helpful in making sure it gets noticed, and this helps to show what the contribution is. However clearly once a claim is being analysed by a Board of Appeal it won't add much.

MaxDrei said...

Help me will you, readers, because I think that the claim defines the subject matter in terms of technical features and the description describes the technical effects delivered by the claimed combination of technical features. So, tagging the effects on to the end of the claim alters nothing.

Ah, you might say, tagging on the effects narrows the claim to that which works.

But the EPO P&S Approach covers that, by requiring a preliminary enquiry, whether the claimed feature combination does indeed deliver a solution to the OTP prayed in aid by the patentee.

So, move along there folks. Nothing new here.

Or is there?

Anonymous said...

Hi MaxDrei, I think you are absolutely right in that there is nothing 'new' here, but I've found in practice with product claims adding the technical effect can guide the Examiner's thinking about the invention, and that will also help in defining the problem to be solved.

'Protein of diameter X' sounds less impressive than 'Protein able to be transported more effectively into cells having diameter X'

Here, hopefully the Examiner will identify the right technical effect, and so define the problem to be solved correctly.

Objectively speaking it shouldn't make a difference of course, but in practice I think it helps.

Anonymous said...

Including the effect in the claim can help to exclude claim interpretations for which the effect does not occur.

Including the effect in the claim can also help to limit the scope of the claim to the area in which the effect occurs, where this would be difficult to achieve by adding or clarifying more structural features.

Of course once the effect is in the claim and the EPO has reason to think the effect is not achieved, the claim might have an Art. 83 problem. Without the effect in the claim this would be a matter of Art. 56. See G 1/03, point 2.5.2:
"If (...) there is lack of reproducibility of the claimed invention, this may become relevant under the requirements of inventive step or sufficiency of disclosure. If an effect is expressed in a claim, there is lack of sufficient disclosure. Otherwise, ie if the effect is not expressed in a claim but is part of the problem to be solved, there is a problem of inventive step (T 939/92, OJ EPO 1996, 309)."