Examination Matters – webinar series in the medical field Experimental data: Impact on patentability in medical applications Elsie Cielen Examiner, Second Medical Applications 5 December 2018 Britta Kley Lawyer
Presenting today The presenter(s) Elsie Cielen ▪ Examiner Search/Examination/Opposition ▪ Expert Patent Procedures Management ▪ Sector HBC – 2 nd Medical Applications ▪ PhD Chemistry, KU Leuven, BE Britta Kley ▪ Litigator for an international law firm, 2001-2004 ▪ Lawyer at the EPO since 2004 ▪ Lawyer in Directorate Patent Law since 2012 ▪ Doctorate Degree in Law, University of Trier, DE European Patent Office 2
Experimental data: Impact on patentability in medical applications Objectives ▪ Understanding under which conditions an objection of insufficiency of disclosure or lack of inventive step can be overcome by submitting post-published evidence ▪ Becoming aware of the impact enhanced publication requirements for clinical trail data may have on further medical use claims ▪ Gaining awareness of the role of clinical trials as prior art in relation to novelty and inventive step, and the importance of the presence of experimental data in the application as filed European Patent Office 3
Experimental data: Impact on patentability in medical applications Agenda ▪ Experimental data and sufficiency of disclosure / inventive step − Background − Practical case − Conclusion ▪ Clinical trials and novelty / inventive step − Background − Publication requirements for clinical trial data − Practical case − Conclusion ▪ Questions European Patent Office 4
Experimental data: Impact on patentability in medical applications Agenda ▪ Experimental data and sufficiency of disclosure / inventive step − Background − Practical case − Conclusion ▪ Clinical trials and novelty / inventive step − Background − Publication requirements for clinical trial data − Practical case − Conclusion ▪ Questions European Patent Office 5
Experimental data and sufficiency of disclosure / inventive step G 1/03 §§ GL F-III, 12 Article 56 vs Article 83 Claimed invention lacks reproducibility (non-working examples): ▪ If the technical effect expressed in the claim is not achieved: Art. 83 Technical effect is part of the proposed solution, hence it cannot be part of the problem ▪ If the effect is not expressed in the claim but is part of the problem to be solved: Art. 56 European Patent Office 6
Can insufficiency of disclosure or lack of inventive step be solved by submitting post- published evidence? European Patent Office 7
Experimental data and sufficiency of disclosure / inventive step GL H-V, 2.2 Art. 56 EPC Late filed evidence: of avail Art. 83 EPC Later filed examples or new effects may be taken into account Art. 123(2) EPC in support of patentability, e.g.: ▪ an additional example, as evidence that the invention can be GL F-IV, 6.3 applied, on the basis of the information in the application as filed, over the whole field claimed ▪ a new effect in support of inventive step, provided that it is GL G-VII, 11 implied by or at least related to an effect disclosed in the application as filed European Patent Office 8
Experimental data and sufficiency of disclosure / inventive step Art. 83 EPC Late filed evidence of no avail: T 609/02 Use of a steroid hormone which fails to promote transcriptional activation of glucocorticoid receptor- or retinoic acid receptor- responsive genes, for the preparation of a pharmaceutical Claim for the treatment of AP-1 stimulated tumour formation, arthritis, asthma, allergies and rashes, said hormone being identified by the method according to the previous claims European Patent Office 9
Experimental data and sufficiency of disclosure / inventive step Art. 83 EPC Late filed evidence of no avail: T 609/02 (2) ▪ Second medical use claim: therapeutic effect is functional technical feature of the claim ▪ Unless known at priority date, application must disclose suitability of the product for the claimed therapy ▪ Simple verbal statement in application is not enough ▪ For sufficient disclosure of a therapeutic application, results in clinical trials/animals not always necessary European Patent Office 10
Experimental data and sufficiency of disclosure / inventive step Art. 83 EPC Late filed evidence of no avail: T 609/02 (3) ▪ Patent must provide information, e.g. tests, to show that claimed compound has direct effect on mechanism involved in the disease, this mechanism being known from prior art or demonstrated in patent ▪ Showing pharmaceutical effect in vitro sufficient if for skilled person this effect directly and unambiguously reflects therapeutic application, i.e. if there is a "clear and accepted established relationship" between shown physiological activities and disease European Patent Office 11
Experimental data and sufficiency of disclosure / inventive step Art. 83 EPC Late filed evidence of no avail: T 609/02 (4) 1 Case Law of the Boards ▪ Once this evidence is available from application, post- of Appeal of the EPO, published evidence may be taken into account, 8 th edition 2016, section II.C.6.2 − but only to back-up findings in the patent application in relation to the use of the ingredient as a pharmaceutical, − not to establish sufficiency of disclosure on their own 1 European Patent Office 12
Experimental data and sufficiency of disclosure / inventive step Art. 83 EPC Late filed evidence of no avail: T 609/02 (4) 1 Case Law of the Boards ▪ Once this evidence is available from application, post- of Appeal of the EPO, published evidence may be taken into account, 8 th edition 2016, section II.C.6.2 − but only to back-up findings in the patent application in relation to the use of the ingredient as a pharmaceutical, − not to establish sufficiency of disclosure on their own 1 ▪ T 801/06: r. 28: claimed therapeutic effect may be proven by any kind of data, as long as they clearly and unambiguously reflect the therapeutic effect European Patent Office 13
Experimental data and sufficiency of disclosure / inventive step Art. 56 EPC Late filed evidence of no avail: T 1329/04 A polynucleotide encoding a polypeptide having GDF-9 activity selected from the group consisting of: (a) a polynucleotide having the nucleic acid Claim sequence of SEQ ID NO:3; (b) a polynucleotide encoding a polypeptide having the amino acid sequence of SEQ ID NO:4; ... European Patent Office 14
Experimental data and sufficiency of disclosure / inventive step Art. 56 EPC Late filed evidence of no avail: T 1329/04 (2) ▪ The definition of an invention as being a contribution to the art requires that it is at least made plausible by the disclosure in the application that its teaching solves indeed the problem it purports to solve ▪ Supplementary post-published evidence may in the proper circumstances also be taken into consideration, BUT it may not serve as the sole basis to establish that the application solves indeed the problem it purports to solve European Patent Office 15
Experimental data: Impact on patentability in medical applications Agenda ▪ Experimental data and sufficiency of disclosure / inventive step − Background − Practical case − Conclusion ▪ Clinical trials and novelty / inventive step − Background − Publication requirements for clinical trial data − Practical case − Conclusion ▪ Questions European Patent Office 16
Experimental data and sufficiency of disclosure / inventive step Case 1 (1) A compound of formula (1) for use in the treatment of a CNS disorder associated with Claim the dopamine D2 receptor, which is bipolar disorder. European Patent Office 17
Experimental data and sufficiency of disclosure / inventive step Case 1 (1) A compound of formula (1) for use in the treatment of a CNS disorder associated with Claim the dopamine D2 receptor, which is bipolar disorder. ▪ data show that compound is D2 receptor antagonist ▪ "The potent D2 receptor antagonist in the Disclosure present invention is useful for various disorders of the CNS associated with the dopamine D2 receptor that induces bipolar disorders." European Patent Office 18
Experimental data and sufficiency of disclosure / inventive step Do you think that the information in the application is sufficient? Case 1 (1) A compound of formula (1) for use in the treatment of a CNS disorder associated with Claim the dopamine D2 receptor, which is bipolar disorder. ▪ data show that compound is D2 receptor antagonist ▪ "The potent D2 receptor antagonist in the Disclosure present invention is useful for various disorders of the CNS associated with the dopamine D2 receptor that induces bipolar disorders." European Patent Office 19
Experimental data and sufficiency of disclosure / inventive step Do you think that the information in the application is sufficient? Case 1 (1) → yes no A compound of formula (1) for use in the treatment of a CNS disorder associated with Claim the dopamine D2 receptor, which is bipolar disorder. ▪ data show that compound is D2 receptor antagonist ▪ "The potent D2 receptor antagonist in the Disclosure present invention is useful for various disorders of the CNS associated with the dopamine D2 receptor that induces bipolar disorders." European Patent Office 20
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