6.1.2 Scope of a purpose-related product claim

In T 128/82 (OJ 1984, 164) the board considered the question of a first medical indication (first medical use of a known substance) with regard to the breadth of the purpose-related product claim. The examining division had refused the application on the grounds that it failed to fulfil the requirements of Art. 52(4) and 54(5) EPC 1973 (now Art. 53(c) and 54(4) EPC), as the claims were not limited to the specific therapeutic use of the known compounds as first discovered. The board had to consider whether the broad version of the claims was allowable having regard to Art. 54(5) EPC 1973 and, in particular, whether the EPC 1973 offered a basis for a limited statement of therapeutic purpose susceptible of narrow interpretation. In the opinion of the board the EPC 1973 neither prohibited nor required an unlimited statement of purpose. It held that Art. 54(5) EPC 1973 permitted a purpose-limited substance claim stating a general therapeutic purpose and found that where a known compound was for the first time proposed and claimed for use in therapy, the fact that a specific use was disclosed in the specification did not in itself call for a restriction of the purpose-limited product claim to that use (see also T 43/82 and T 36/83, OJ 1986, 295).

The board further observed that the practice of the EPO hitherto had shown that substance and medical preparation claims for therapeutically active compounds not limited to specific indications were allowed, even though, as a rule, only certain specific activities were stipulated. As a general rule, this practice concerned new compounds. In the board's judgment, it could not be inferred from the EPC 1973 that compounds, which - although previously known - were still patentable under Art. 54(5) EPC 1973, were in principle to be treated differently. If an inventor was granted absolute protection in respect of a new chemical compound for use in therapy, the principle of equal treatment would also require an inventor, who for the first time made a known compound available for therapy, to be correspondingly rewarded for his service with a purpose-limited substance claim under Art. 54(5) EPC 1973 covering the whole field of therapy. Any other treatment would only be justified were Art. 54(5) EPC 1973 to forbid outright a broad scope of protection. The fact that Art. 54(5) EPC 1973 did not contain any requirement that protection should be broad was not in itself a reason for refusing to grant such protection. As a general rule, the usual practice as it related to new compounds should be followed. On the other hand, the mere fact that there were no instructions concerning all and any possible specific therapeutic applications did not justify limiting the scope to the therapeutic application actually mentioned. This would not be in keeping with general practice of the EPO concerning therapeutically active compounds.

The board noted that under Art. 54(5) EPC 1973 a compound which was known but not used therapeutically was to be regarded as novel. Novelty, however, was not only destroyed by the fact that the same specific therapeutic effect was already known in the art, but suffered also from the disclosure of any other specific therapeutic application. The disclosure of any specific effect, therefore, always had the same consequences as far as novelty was concerned - which in turn made it fair to regard as admissible a broad statement of purpose covering all and any specific indications.

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