Patent decision

BL number
Concerning rights in
Hearing Officer
Dr L Cullen
Decision date
18 September 2018
Person(s) or Company(s) involved
EOS Neuroscience, Inc. & Wake Forest University Health Sciences, Inc.
Provisions discussed
Sections 1(1)(b) and 4A(1)
Inventive step
Related Decisions


This application relates to compositions and methods for the selective silencing of neurons in pain pathways using a combination of light-sensitive gene transfer and wavelength specific illumination. It discloses a recombinant nucleic acid comprising a nucleic acid fragment encoding a light-sensitive protein, such as enhanced halorhodopsin (eNpHR), and a regulatory nucleic acid fragment that is capable of directing selective expression of the light sensitive protein in cells of the dorsal root ganglion (DRG), such as the preprotachykinin-A (PPT-A) or Scn10a promoter. PPT-A is a precursor of the peptide neurotransmitter, Substance P.

The examiner considered that the invention as claimed lacked patentability as a method of treatment by surgery because the claims included a separate step that required surgical insertion of a means to generate light. The examiner also found that the invention as claimed lacked an inventive step over the cited prior art.

Taking account of relevant case law from the EPO relating to Article 53(c) of the European Patent Convention 2000, the Hearing Officer (HO) found that the invention as claimed did not contravene Section 4A of the Act The invention differed from the situation in EPO decision T-0566/07 because the method of the invention (the treatment of pain) only occurs when the light is caused to shine and without light there is no treatment. Thus there was no separate step or second activity and, thus, no method of surgery.

In relation to inventive step, the Hearing Officer, following Windsurfing/Pozzoli, found that the team skilled in the art with the requisite common general knowledge (CGK), and being familiar with the cited prior art, would be aware that substance P was a suitable target but would not be led to target cells of the DRG specifically. Thus the invention as claimed was not obvious under section 1(1)(b) of the Act.

The case was remitted back to the examiner to consider if at the compliance date, the application was in order for grant.

Full decision O/579/18 PDF document462Kb