Patent decision

BL number

O/220/13

Concerning rights in

GB0804968.6, GB0807735.6

Hearing Officer

Mr S Brown

Decision date

23 May 2013

Person(s) or Company(s) involved

Ajit Lalvani, Kartar Singh Lalvani & Robert Taylor

Provisions discussed

PA 1977 Sections 1(1)(b), 14(5)(c), & 76(2).

Keywords

Added subject matter, Claim construction, Inventive step, Support

Related Decisions

None

Summary

The two applications relate to a composition for bone health maintenance and a composition for use during lactation, respectively.

Prior to considering the inventiveness of the claims of these two applications, the hearing officer addressed the impact of the decision in Human Genome Sciences v Eli Lilly on the relative effects of the jurisprudence of the UK national courts and that of the Boards of Appeal of the EPO. He found that the relative effects were unchanged, with the decisions of the UK courts remaining binding on the Intellectual Property Office and those of the EPO Boards of Appeal remaining persuasive.

Applying the Windsurfing/Pozzoli test the claims of both applications were construed as not relating to medical use. Furthermore, following SABAF, they were then found to lack an inventive step as a collocation of known ingredients.

The hearing officer then considered the applications as a whole and concluded that even if the claims could be amended so as to relate to medical uses, they would then lack support following the decision in Prendergast's Applications and the decision before the Intellectual Property Office in BL O/192/04.

Finally, the hearing officer also found that three claims in each application added subject matter that was not present at their respective filing dates.

Both applications were refused.