Patent decision

BL number

O/221/13

Concerning rights in

GB1003527.7

Hearing Officer

Dr J Houlihan

Decision date

28 May 2013

Person(s) or Company(s) involved

Agency for Science, Technology and Research

Provisions discussed

Section 4(A)4, Section 14(5)(c), Section 76(2) of the Patent Act 1977, as amended

Keywords

Added subject matter, Support

Related Decisions

None

Summary

The application concerns a gene called VHZ that encodes a phosphatase. The claims at issue are second medical use claims that are directed to agents against VHZ for use in the treatment of cancers in which VHZ is overexpressed. The examiner had objected that the application only provides support for the use of anti-VHZ agents in the treatment of breast cancer and also that during prosecution the applicant had introduced new subject matter into the main claim. The Hearing Officer arrived at the conclusion that the application provides sufficient evidence for the role of VHZ in cancers in general. On the facts of the case, therefore, he found that the claims are supported. In doing so he relied on a number of authorities, particularly the recent Court of Appeal judgment in Regeneron Pharmaceuticals Inc & Bayer Pharma AG v Genentech Inc. The Hearing Officer also found that the amendment in question did not add new subject matter. The application was remitted to the examiner to complete the formal procedures.

Full decision O/221/13 99Kb