T 1063/06 (Reach-through claim/BAYER SCHERING PHARMA AKTIENGESELLSCHAFT) of 3.2.2009

European Case Law Identifier: ECLI:EP:BA:2009:T106306.20090203
Date of decision: 03 February 2009
Case number: T 1063/06
Application number: 00962413.1
IPC class: C07C 69/76
Language of proceedings: DE
Distribution: A
Download and more information:
Decision text in EN (PDF, 35 KB)
Documentation of the appeal procedure can be found in the Register
Bibliographic information is available in: DE | EN | FR
Versions: OJ
Title of application: -
Applicant name: Bayer Schering Pharma Aktiengesellschaft
Opponent name: -
Board: 3.3.10
Headnote: I. A formulation of a claim whereby functionally defined chemical compounds are to be found by means of a new kind of research tool using a screening method set out in the description constitutes a reach-through claim which is also directed to future inventions based on the one now being disclosed. As the applicant is entitled to claim patent protection only for his actual contribution to the art, it is therefore both reasonable and imperative to limit the claim's subject-matter accordingly. Patent protection under the EPC is not designed for the purpose of reserving an unexplored field of research for a particular applicant, as reach-through claims do, but to protect factual results of successful research as a reward for making concrete technical results available to the public.
II. A functional definition of a chemical compound (in this case in a reach-through claim) covers all compounds possessing the capability according to the claim. In the absence of any selection rule in the application in suit, the skilled person, without the possibility of having recourse to his common general knowledge, must resort to trial-and-error experimentation on arbitrarily selected chemical compounds to establish whether they possess the capability according to the claim; this represents for the skilled person an invitation to perform a research programme and thus an undue burden (following T 435/91).
Relevant legal provisions:
European Patent Convention Art 83
European Patent Convention Art 123(2)
Keywords: All requests: reach-through claim - chemical compounds defined in functional terms - future inventions also claimed - limiting claim to actual contribution to the art both reasonable and imperative - invention cannot be carried out within the entire scope claimed without undue effort - research programme
Catchwords:

-

Cited decisions:
T 0162/82
T 0068/85
T 0248/85
T 0409/91
T 0435/91
T 0216/96
T 1151/04
Citing decisions:
T 0155/08
T 0852/09
T 0958/10
T 1797/10
T 0480/11
T 0677/11
T 1248/11
T 0524/12
T 0544/12
T 1777/12
T 0702/13
T 1001/13
T 2438/13
T 1959/15
T 0524/17
T 0241/18
T 2015/20

Source: http://www.epo.org/law-practice/case-law-appeals/recent/t061063ep1.html

Date retrieved: 17 May 2021

24 references found.

Click X to load a reference inside the current page, click on the title to open in a new page.

EPC Articles

EPO Guidelines - F The European Patent Application

Offical Journal of the EPO

Case Law Book: II Conditions to be met by an Application

General Case Law