Agency for Science, Technology and Research (Patent) [2013] UKIntelP o22113 (28 May 2013)
Patent decision
BL number
O/221/13
Concerning rights in
GB1003527.7
Hearing Officer
Mr J Houlihan
Decision date
28 May 2013
Person(s) or Company(s) involved
Agency for Science, Technology and Research
Provisions discussed
Section 4(A)4, Section 14(5)(c), Section 76(2) of the Patent Act 1977, as amended
Keywords
Added subject matter, Support
Related Decisions
None
Summary
The application concerns a gene called VHZ that encodes a phosphatase. The claims at issue are second medical use claims that are directed to agents against VHZ for use in the treatment of cancers in which VHZ is overexpressed. The examiner had objected that the application only provides support for the use of anti-VHZ agents in the treatment of breast cancer and also that during prosecution the applicant had introduced new subject matter into the main claim. The Hearing Officer arrived at the conclusion that the application provides sufficient evidence for the role of VHZ in cancers in general. On the facts of the case, therefore, he found that the claims are supported. In doing so he relied on a number of authorities, particularly the recent Court of Appeal judgment in Regeneron Pharmaceuticals Inc & Bayer Pharma AG v Genentech Inc. The Hearing Officer also found that the amendment in question did not add new subject matter. The application was remitted to the examiner to complete the formal procedures.