Claims directed to medical treatment which would fall under the exceptions to patentability under Art. 53(c) EPC should, in principle, also be exempted from international search.[Rule 39.1(iv); GL/ISPE 9.08; 9.10; ]

Yet the EPO as ISA applies the same practice as for European applications, and the examiner will explain so in the WO‑ISA.

In the table below, several types of claim involving a composition A or substance X in methods of treatment or diagnosis (hereinafter referred to as medical treatment) are listed. Depending on the situation, some of these could be patentable in an EP application (see also GL/EPO G‑VI, 7.1).

 

Claim wording

Excluded from patentability according to Art. 53(c) EPC

a

compound X for use as a medicament

NO

b

compound X for use in treating disease Y

NO

c

composition A containing X for use in treating disease Y (composition A may be generally defined)

NO

d

medicament containing compound X

NO

e

use of X in a composition A for the treatment of disease Y

YES

f

use of X as a medicament for the treatment of disease Y

YES

g

use of X for the treatment of disease Y

YES

h

use of X for preparing a medicament

NO

i

use of X for the manufacture of a medicament for treating disease Y

NO

j

process for the preparation of a medicament for treating disease Y using compound X as an active ingredient

NO

k

method of treatment of disease Y using X

YES

 

For claims of type (a), (b) or (c), the examiner will search and examine the claims and assess the novelty and inventive step of the indicated uses, as is the case for an EP application. In the WO‑ISA, a remark will be added that novelty and inventive step have been assessed according to EPO practice. The reason for adding this remark is that under Art. 54(4) and (5) EPC it is possible to obtain patent protection for any substance or composition comprised in the state of the art, for any use or specific use, respectively, in a (medical) method referred to in Art. 53(c) EPC, provided that such use is not comprised in the state of the art. Claims seeking this kind of protection may be drafted as "Substance X for use as a medicament/for use in therapy" or "Substance X for use in the treatment of disease Y", respectively. See also GL/EPO G‑VI, 7.1.

For claims of type (d) or (h), the examiner will search and examine the claims and assess the novelty and inventive step thereof, as is the case for an EP application. In the WO‑ISA, a remark will be added that novelty and inventive step have been assessed according to EPO practice.

For claims of type (i) or (j), the examiner will search and examine the claims and assess the novelty and inventive step of the indicated uses. In the WO‑ISA, a remark regarding EPO practice with regard to such claims will be added.

For claims of type (e), (f), (g) or (k), in the vast majority of cases, a search report is established on the basis of the alleged effects of the product/composition, because their subject-matter can readily and in a straightforward manner be understood in terms of these effects. For reasons of efficiency an opinion on novelty, inventive step and industrial applicability will be given for (at least) the independent claims, as far as relating to the alleged effects of the compound/composition, as would be done for an EP application. A reservation concerning patentability will be added, indicating that at the EPO claims directed to a method of treatment or the use of a composition in a treatment are exempted from patentability, but that a claim directed to a composition or substance for such use would be admissible.[Rule 33.3(b); ]

In some cases, no search report can be established for claims of type (e), (f), (g) or (k), because their subject-matter cannot readily and in a straightforward manner be understood in terms of the alleged effects of the compound/composition. For these claims, no assessment under Art. 33(1), i.e. novelty, inventive step and industrial applicability, will be carried out.