When is a second non-medical use claim novel?
7th April 2020
Second medical use claims, in which a known medicament is claimed for the treatment of a new disease, are well established and explicitly provided for in both the UK Patents Act and European Patent Convention. Less commonly used are second non-medical use claims, in which a known product is put to a new, non-medical use.
The recent Board of Appeal decision T1385/15 concerns European patent EP1865998, which claimed a disinfectant agent for killing bacterial, viruses and fungi through mechanical disinfection of a surface. This patent had been revoked during Opposition for lack of novelty, and the question of novelty was subsequently considered by the Board of Appeal.
The principle earlier case on this issue was G6/88, in which it was held that the second non-medical use of a product is novel if the new use comprises a novel functional effect. In this new case, the Board of Appeal considered how this novelty assessment should be carried out.
The Opposition Division had ruled that there was a lack of novelty based on a combination of prior art documents D1 and D2, the product being known from D1 and the function being apparent from D2. However, the Board of Appeal dismissed this decision, there being no reason to depart from the principles laid down in G6/88 that in order to deprive a claim of novelty all of the features of a claim should be disclosed in combination in the prior art, and hence that a novelty attack cannot be based on a combination of two prior art documents.
The Board considered the distinguishing feature between D1 and the claimed invention to be the use of the disinfectant for killing/inactivating microorganisms selected from the group consisting of bacteria, viruses and fungi when used as claimed (mechanical disinfection).
The Board relied on the guiding principles laid down in G6/88: a claim directed to the use of a known substance for a particular purpose, which is based on a technical effect described in the patent, is to be interpreted as containing this technical effect as a functional feature.
In T1385/15, the technical effect of the known substance was not isolated, but was given in the context of the manner in which it was to be used (mechanical disinfection). The functional technical feature that justified novelty in this case consisted in achieving a technical effect in a certain context: antimicrobial activity in connection with the mechanical disinfection of objects.
This case has now been remitted back to the Opposition Division for further consideration.
What can we take from this case? Second non-medical use claims can be novel, but it may not be sufficient to merely claim a newly identified feature of an existing product which, while not previously known, would nevertheless have been inherently present in that product. The patentee was successful in establishing novelty in T1385/15 because the newly identified feature came about through the use of the claimed disinfectant in a particular way.