Key points
- This is a post from stock; the decision was issued 24.03.2021, well before referral G 2/21 was made.
- In this decision, the Board also deals with inventive step. Claim 1 is a 'pure' chemical compound claim (directed to a Marush group of chemical compounds as such).
- “According to the respondent [patentee], the objective technical problem was the provision of further kinase inhibitors for the treatment of inter alia cancer.”
- “It is undisputed that the patent comprises examples falling within the scope of claim 1 ... It is also undisputed that the patent ... lacks any biological activity data for compounds falling within the scope of contested claim 1.” The patent contains other biological activity data.
- "It was not disputed by the [opponent] that the compounds tested in [the declarations D7 and D23 filed by the patentee in the course of the proceedings] exhibited biological activity as kinase inhibitors."
- "The respondent [patentee] submitted that the biological data disclosed in D7 and D23 showed that a reasonable and representative structural selection of the claimed compounds displayed a kinase inhibitory effect. Claim 1 encompassed a relatively precise structural definition of a specific pharmacophore to which the stated biological activity could be attributed, and was a reasonable extrapolation of these examples and biological data, based on structure-activity relationship (SAR) analysis for the pharmacophore identified. In the absence of any evidence to the contrary, the board can only agree".
- " It follows from the foregoing that the objective technical problem is as formulated by the respondent [patentee], namely the provision of further kinase inhibitors for the treatment of inter alia cancer."
- The claims are held to be inventive.
- As a comment, this decision illustrates that the problem-solution approach, at least in the field of chemistry, is focused on the effect. Even though the claim at issue is directed to the (class of) molecules as such and hence is not limited to any particular use, the Board's conclusion that the subject matter is inventive is based entirely on the biological activity observed when the compound is used in a particular way (the treatment of cancer, or more precisely used as a kinase inhibitor).
- Fully in line with established case law, the Board analyses the credibility of the technical effect over the whole scope of the claim in terms of chemical composition (under the Markush formula), but not over the whole scope of the protection in terms of possible uses of the molecule. In other words, a technical effect in the context of one use of the compound is sufficient for acknowledging inventive step of a product claim which covers every use of the molecule.
- The basis of this approach to inventive step of claims directed to a chemical compound (or a class of chemical compounds) appears to be the " Kongorot" judgment of the German Reichsgericht of 20.03.1889, as confirmed by BGH 27.02.1969 X ZB 11/68 Disiloxan; see also Bruchhausen in GRUR 1989, 153.
- As a question to readers, are there any decisions of the Boards expressly addressing this matter?
T 2320/16
source http://justpatentlaw.blogspot.com/2022/09/t-232016-ii-inventive-step-chemical.html
