GL G VI 9 Novelty of "reach-through" claims

"Reach-through" claims are defined as claims attempting to obtain protection for a chemical product (and also uses thereof, compositions thereof, etc.) by defining that product functionally in terms of its action (e.g. agonist, antagonist) on a biological target such as an enzyme or receptor (see F‑III, 9). In many such cases, the applicant functionally defines chemical compounds in this way by reference to a newly identified biological target.

GL G VI 8.1 Error margins in numerical values

The skilled person knows that numerical values relating to measurements are subject to measurement errors which place limits on their accuracy. For this reason, the general convention in the scientific and technical literature is applied: the last decimal place of a numerical value indicates its degree of accuracy. Where no other error margins are given, the maximum margin is ascertained by applying the rounding-off convention to the last decimal place (see T 175/97), e.g. for a measurement of 3.5 cm, the error margin is 3.45-3.54.

GL G VI 8 Selection inventions

Selection inventions deal with the selection of individual elements, sub-sets, or sub-ranges, which have not been explicitly mentioned, within a larger known set or range.

(i)In determining the novelty of a selection, it has to be decided whether the selected elements are disclosed in an individualised (concrete) form in the prior art (see T 12/81).

GL G VI 7.2 Second non-medical use

A claim to the use of a known compound for a particular purpose (second non-medical use) which is based on a technical effect is interpreted as including that technical effect as a functional technical feature. Accordingly, said claim is not open to objection under Art. 54(1), provided that such technical feature has not previously been made available to the public (G 2/88, and G 6/88).

GL G VI 7.1.5 Dependent claims pursuant to Art. 54(5)

The wording of the dependent claims must clearly reflect their dependency on the independent claim (T 2106/10). A suitable formulation may read:

Substance (X) or
Composition (comprising X) (according to claim #)

for use in the therapy of disease Y according to claim # or

GL G VI 7.1.4 Surgical uses pursuant to Art. 54(5)

A claim defining a second surgical use may read "Substance X/ Composition comprising X for use in a method of intracardiac catheterisation as a protector of blood vessel walls".

If the independent claim is directed to a composition, the definition of the composition may be inserted before or after the term "for use".

Purpose-related product claims which do not define a surgical use excluded from patentability under Art. 53(c) are construed as claims directed to a product per se w

GL G VI 7.1.3 Diagnostic uses pursuant to Art. 54(5)

A suitable formulation of a diagnostic claim according to Art. 54(5) may read:

Substance X
or

GL G VI 7.1.2 Therapeutic uses pursuant to Art. 54(5)

The treatment of a disease with a substance or composition which is already known to be used for treating said disease, where the only difference from the known treatment is in the dosage regime, is a specific further medical use within the meaning of Art. 54(5) (see G 2/08).

GL G VI 7.1.1 Products that may be claimed for a further medical use

The scope of protection of use-related product claims under Art. 54(5) is limited to the substance or composition in the context of its medical use which confers novelty and non-obviousness, if any, on the claimed product.

This principle applies only to substances and compositions and cannot be extended to other products.

GL G VI 7.1 First or further medical use of known products

Where a substance or composition is already known, it may still be patentable under Art. 54(4) if the known substance or composition was not previously disclosed for use in a method referred to in Art. 53(c).

Where a substance or composition is already known to have been used in a "first medical use", it may still be patentable under Art. 54(5) for any second or further use in a method according to A