Saturday, 17 October 2009

T 1898/06 - Claims Are to be Clear in Themselves

Claim 19 of the Main Request read as follows: “A pharmaceutical composition comprising a compound according to claim 1 or the pharmaceutically acceptable derivatives thereof.” [IV(b)]

According to A 84 EPC, the claims shall define the matter for which protection is sought (first sentence) and for this purpose they shall, inter alia, be clear and supported by the description (second sentence). This implies that the claims be clear in themselves when being read with the normal skills, but not including knowledge derived from the description of the patent application. (T 988/02 [3.3.1]).

Therefore, the Appellant’s argument that it was clear from the description of the application what was to be understood as pharmaceutically acceptable derivatives, cannot support clarity of the claims. [2.2]

The expression “or the pharmaceutically acceptable derivatives thereof” adds to the compounds as defined in claim 1 those which are “derived” from said compounds. There is, however, no clear definition to which extent the compounds according to claim 1 may be modified while still being regarded as derivatives. This has the effect that the person skilled in the art cannot decide clearly which compounds are to be covered by the claims and which are not. [2.3]

For this reason, the subject-matter of claim 19 of the Main Request is not clear, contrary to the requirements of A 84 EPC. [2.4]

To read the whole decision, click here.