New therapy with a different mode of administration 

In T 51/93 a European patent application relating to the use of human HCG for the manufacture of a medicament for subcutaneous administration was refused by the examining division because prior art document D(1) implicitly disclosed the subcutaneous administration, and because the subcutaneous administration of HCG was an obvious alternative to intramuscular administration. Document D(4) (cited by the board) disclosed vials for injection containing HCG and diluent, obtained by mixing HCG with a carrier and/or diluent. The only difference between the invention as claimed and the disclosure of D(4) was that the claim was directed to an intended method of subcutaneous administration. The claim was drafted in the form approved in decision G 5/83 for claims where the novelty was solely that of the intended use, so the only question to arise was whether a difference in the mode of administration of a medicament could be treated as a new therapeutic use. The board, relying on T 290/86, observed that the mode of administration might be a critical factor in a medical treatment and no reason could be seen for any a priori bar to relying on this difference when distinguishing over the prior art. Rather, patentability should be treated as depending only on whether this modification was in fact novel and inventive. Thus, it was possible to acknowledge novelty over D(4) (see T 143/94, OJ 1996, 430).

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