Zusammenfassung von EPC2000 Art 084 für die Entscheidung T2565/19 vom 29.11.2022

See also abstract under Article 56 EPC. In T 2565/19 the board remarked that the claimed subject-matter was an isolated TRH receptor, i.e. a product. The receptor was defined only by locational and functional features, i.e. the tissue from which it could be isolated: "from human CNS tissue" and its ability to bind the compounds defined in the claim, "wherein the compound having the structure GlpW-Pro-X binds to the TRH receptor sub-type in human CNS tissues but does not bind to the TRH receptor sub-type in human pituitary tissue". Neither of these features conveyed any structural information about the claimed product, for instance whether it was a protein or not, or if it were a protein, what its sequence might be. The board referred to the criteria established by the boards in the case law to determine whether or not a claim was clear (see G 2/88, point 7 of the Reasons, and CLB, 10th edition, II.A.3.1.). The board held that in the absence of any structural features, the claim could not be considered as clear because it failed to enable the protection conferred by the patent (or patent application) to be determined and it did not define the claimed subject-matter in a manner which allowed a meaningful comparison with the state of the art to be made. Indeed, in the absence of any structural information about the claimed subject-matter, it was not possible to determine if the claimed product was novel. For instance, there was no way of ruling out that the functional and locational features defined in the claim did not simply re- characterise a known molecule. The appellant (applicant) had argued that a receptor could be defined solely by its binding properties to its ligand, which was in line with the definition of a receptor from a number of online scientific dictionaries. Moreover, it had maintained that the EPC did not require that an applicant had to sequence a protein in order to be entitled to claim it. The board was not persuaded by the appellant's (applicant's) arguments and concluded that, applying the criteria developed by the boards in the case law, the claim lacked clarity.