SONN Patentanwälte – IP Attorneys

1. EPO-BoA: New non-medical uses of known substances

   Enlarged Board of Appeal decisions G 2/88 and G 6/88 are limited to patent claims directed to (new) non-medical uses of a known substance for a specific purpose, and not to manufacturing processes within the meaning of Article 64(2) EPC. For the (new) purpose to be read as a limiting technical feature...

2. "Gold standard" in novelty testing of a subfield selected from a larger field is sufficient

   The practice so far according to which a sub-range selected from a larger numerical range of the prior art is considered to be novel if (a) the selected sub-range is narrow compared to the known range and (b) the selected sub-range has a sufficient distance from specific...

3. Patients in clinical trial are not members of the public

   The clinical trials were carried out in accordance with the EMEA Guidelines for Good Clinical Practice. These guidelines explicitly require adherence to the prescribed protocol and assurance of drug accountability. This implies that the patients who decided to participate...

4. Novelty of use claims

   The mere discovery of a new property or capability of a particular ingredient of a known composition used for a known purpose cannot establish the novelty of a use claim (as distinguished from the facts underlying the EBoA decision G 2/88) (EPO Board of Appeal, 20/07/2021,