SONN Patentanwälte – IP Attorneys

EPO case law: Doctrine of inherency not applicable for patient populations

If a claim is directed to a known compound or composition for use in a therapeutic method of treatment or prevention of a disease, and the claim specifies that the subject to be treated displays a clearly defined and detectable marker, which is not displayed by all subjects affected by or likely to develop that disease, then it follows from decision G 2/88 (according to which the question of inherency does not arise under Article 54 EPC) that the purposive selection of the patients displaying the marker for the specified treatment is a functional feature of the claim that must be taken into account in relation to the question of novelty. In other words, it is irrelevant for the question of novelty whether the patients specifically selected in the claim have necessarily or inherently already been "co-treated" as part of broader patient populations in the prior art (EPO BoA 15 May 2019, T 694/16).