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Intellectual Property Law

: IPKat

Reach-though claim goes somewhat lame

By Johanna Gibson, David Pearce, Jeremy Phillips and Ilanah Simon.

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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".

Full post as published by IPKat on August 13, 2009 (boomark / email).