Friday, 25 June 2010

T 1711/08 – Prettier Ain’t Always Healthier

** Translation from the German **

[3.1] Claim 1 of the main request concerns a cosmetic process for improving the growth of hair by treatment with an agent that comprises customary carrier substances, active ingredients and auxiliaries and a mixed salt of carnitine and tartaric acid.

[3.2] Although the wording of claim 1 is not explicitly directed to a method for the treatment of the human or animal body by therapy under A 53(c), according to the impugned patent, the used agent is to be considered as a pharmaceutical agent, too (see e.g. claim 1 as granted [Pharmaceutical and cosmetic agents for the treatment of hair, comprising …”]). As a consequence, it has to be determined whether the cosmetic effect disclosed in the patent can be distinguished from the therapeutic effect or if both effects are inseparably linked (see Case Law of the Boards of appeal, 5th edition, 2006, I.A.2.3.2).

[3.3] It is to be noted that the intention to improve the growth of hair can exist even in the absence of a disease. The desire to have longer or more dense hair is often due to cosmetic and aesthetic reasons and not immediately linked to a disease of the person concerned. In particular it is possible to distinguish the two uses of the agent because they concern clearly different groups of persons. The first group consists in patients who have lost hair due to a disease, whereas the second group consists in persons who do not suffer from such a disease and who are interested in improving their appearance.

[3.4] In contrast to the situation in decision T 780/89, which has been cited by the [opponent], where the therapeutic effect of an immunostimulating agent was inseparably linked to the claimed effect for the non therapeutic stimulation of the body’s own defences of animals, because the improved meat production resulting from the stimulation was also due to the better state of health of the animals, in the present case the state of health is not directly concerned as there is no information that the improved hair growth resulting in an improved appearance of the hair is linked to the health of the person receiving the treatment.

[3.5] The present case also differs from the cases underlying T 290/86 and T 1077/93.

In T 290/86 the claimed method for removing plaque from teeth inevitably had a therapeutic effect, i.e. the effect of preventing caries and periodontal diseases, which effect was confirmed in the impugned patent.

In T 1077/93 it was shown that the protective effect protecting the skin against UV radiation obtained with the agent in use was due to an interaction with cellular mechanisms (Zellgeschehen) in the epidermis, which interaction prevented pathological consequences.

However, in the present case there is no proof that the cosmetic treatment necessarily has a prophylactic effect. In particular, the results filed in document D6 only show that the agent had an effect on the hair growth factors, but the [opponent] has not proven that this effect necessarily results in prophylaxis against possible diseases.

[3.6] The fact that the agent was always defined as pharmaceutical and cosmetic agent does not mean that its cosmetic and therapeutic uses are inseparable, but it only confirms that it was in the [patent proprietor’s] interest to protect both effects, as shown in claims 12 and 13 as granted, which are directed to a cosmetic method for improving hair growth and to the use of mixed salts of carnitine and tartaric acid for preparing a pharmaceutical agent, respectively.

[3.7] Consequently the process of claim 1 of the main request is not covered by the exception enshrined in A 53(c).

To read the whole decision (in German), you may click here.