Patent decision

BL number
Concerning rights in
Hearing Officer
Dr L Cullen
Decision date
8 October 2014
Person(s) or Company(s) involved
Gene Onyx Limited
Provisions discussed
Section 1(2), Section 14(3)
Excluded fields (allowed), Sufficiency
Related Decisions


PCT application WO2013/093407 entitled “Product selection using genetic analysis” entered the UK national phase as application GB1313219.6. It relates to a method of using genetic analysis to assess the suitability of active ingredients in skincare, cosmetic, cosmeceutical or nutricosmetic products for use by an individual. The method associates the cosmetically active agent with the individual via their genetic make-up in contrast with prior art teachings where the cosmetically active agent is associated with a particular skin condition or disorder. The method associates hot-spots in a person’s genome - so called single-nucleotide polymorphisms (SNP’s) - with an individual’s susceptibility or lack of response to cosmetically active compounds. A weight is associated to each SNP based on the impact it has on the cosmetically active compound being able to deliver its cosmetic outcome. Weights for individual cosmetically active agents are added together to determine the suitability of a cosmetic product comprising these agents. The examiner argued that application does not the requirements of Section 1(2) as a mental act or a computer as such or that there was sufficient disclosure to enable the person skilled in the art to work the invention as claimed, in particular to assign the weightings to the SNPs.

The hearing officer, applying Aerotel/Macrossan found that the contribution of the method did not fall solely in the excluded matter and lay in the identification of SNP’s at certain locations in an individual’s genome and an association of these SNP’s with cosmetically active compounds based on how the said compounds interacted with the SNP’s in question. Furthermore, the method of involves the step of identifying the best cosmetic product based on an individual’s genetic material.

Regarding sufficiency, there were concerns that the identification and association of SNP’s with particular compounds and the application of weightings would be an undue burden to those wishing to perform the invention. The applicant provided evidence that the skilled team would not face such a burden in performing the method of the invention. Identification of the SNP’s could be performed by biomedical text/data mining and bio-informatics and the application of weightings could be performed using known methodologies.

The application was remitted to the examiner for further processing under Section 18.

Full decision O/435/14 PDF document187Kb