Agency for Science, Technology and Research (Patent): IPO 28 May 2013

IPO 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 and 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.

Houlihan J
[2013] UKIntelP o22113, O/221/13
Bailii
Patents Act 1977 4(A)4, 14(5)(c), 76(2)
England and Wales

Intellectual Property

Updated: 14 November 2021; Ref: scu.511206