T 1063/06 (Reach-through claim/BAYER SCHERING PHARMA AKTIENGESELLSCHAFT) of 03.02.2009

I. A formulation of a claim whereby functionally defined chemical compounds are to be found by means of a new kind of research tool using a screening method set out in the description constitutes a reach-through claim which is also directed to future inventions based on the one now being disclosed. As the applicant is entitled to claim patent protection only for his actual contribution to the art, it is therefore both reasonable and imperative to limit the claim's subject-matter accordingly. Patent protection under the EPC is not designed for the purpose of reserving an unexplored field of research for a particular applicant, as reach-through claims do, but to protect factual results of successful research as a reward for making concrete technical results available to the public.

II. A functional definition of a chemical compound (in this case in a reach-through claim) covers all compounds possessing the capability according to the claim. In the absence of any selection rule in the application in suit, the skilled person, without the possibility of having recourse to his common general knowledge, must resort to trial-and-error experimentation on arbitrarily selected chemical compounds to establish whether they possess the capability according to the claim; this represents for the skilled person an invitation to perform a research programme and thus an undue burden (following T 435/91).