Decision Nº O/435/14 from Intellectual Property Office - (Patent decisions), 8 October 2014
| Judge | Dr L Cullen |
| Court | Intellectual Property Office (United Kingdom) |
| Patent Number | GB1313219.6 |
| Date | 08 October 2014 |
| Administrative Decision Number | O/435/14 |
| Parties | Gene Onyx Limited |
BL O/435/14
08 October 2014
APPLICANT
Gene Onyx Limited
ISSUE
The Patents Act 1977: whether patent
application GB1313219.6 complies with
Sections 1(2) and 14(3) of the Act
HEARING OFFICER
Dr L Cullen
DECISION
Introduction
1 This decision concerns patent application GB1313219.6 entitled “Product selection
using genetic analysis” in the name of Gene Onyx Limited. This application was
filed under the provisions of the Patent Cooperation Treaty (PCT) on 24 July 2013,
claiming an earliest priority date of 20 December 2012, and was initially published as
WO 2013/093407 A1 on 27 June 2013. On entering the national phase in UK, it was
subsequently re-published as GB 2501640 A on 30 October 2013.
The application
2 The application relates to a method of using genetic analysis to assess the suitability
of active ingredients in skincare, cosmetic, cosmeceutical or nutricosmetic products
for use by an individual. In the discussion below, I will refer to these types of
products collectively as cosmetic products and their impact as cosmetic activity.
3 Genetic analysis is used to assess if the active ingredients in these cosmetic
products will be effective in an individual in terms of achieving a particular outcome,
for example, treatment of dry skin. The response to these active ingredients in the
individual may be a so-called ‘direct response’ or an ‘indirect response’ depending
on which biochemical pathway in that individual these active ingredients target to
exert their cosmetic activity. The genetic analysis focuses on what are known as
single-nucleotide polymorphisms (SNPs) which are “hot spots” of variation in an
individual’s genome1
. These variations in the genome are responsible for an
individual’s susceptibility to, or lack of response to, biologically or, in this case,
1 The genome is the genetic material of an organism, in this case a human. It is encoded either in
DNA or, for many types of viruses, in RNA. The genome includes both the genes and the non-coding
sequences of the DNA (or RNA).
cosmetically active compounds. The method of the invention sets out a strategy,
based on the analysis of a sample of genetic material from the individual, for the
identification of the presence or absence of SNPs in that individual’s genome which
indicate a direct-response or an indirect-response relationship to each specific
compound with a cosmetic activity. These specific compounds may be used singly
or, as is more common, in combination with other cosmetic compounds as
ingredients of various commercially available cosmetic preparations. The method
associates a ‘weight’ to each SNP that is identified with each individual specific
compound. This weight is based on how the specific compound interacts with the
SNP in question, for example, a first-type interaction – i.e., direct binding of the
compound to the protein that the SNP codes for, such as a receptor, or a second-
type or indeed third-type of interaction which may involve an indirect response, for
example, the specific compound interacts with the proteins, enzymes or co-factors
involved in a downstream signalling mechanism. The weights for an active
compound can then be worked out and used to give an indication whether or not this
active compound would be beneficial, non-beneficial or possibly harmful to the
individual in question.
Background
4 A number of rounds of written and oral communication took place between the
Examiner and the Applicant concerning this application. The first official examination
report (dated 25 September 2013) stated that the invention lacked patentability
under Section 1(2) of the Patents Act 1977 (hereafter “the Act”) because invention as
claimed relates to a method of performing a mental act and/or a computer program.
The examiner also raised objections under novelty and inventive step as well as to
support and clarity.
5 In light of the arguments and amendments received from the applicant in their letter
dated 22 November 2013, a second Examination Report was issued, dated 4
December 2013, in which the Examiner, following further consideration, stated that
he was of the opinion that the application also lacked sufficiency under Section 14(3)
of the Act. He considered that the application as filed did not disclose matter in
enough detail for a skilled person to be able to carry out the invention
6 Despite further arguments presented by the Applicant in writing and by telephone,
the Examiner, in his third Examination Report dated 26 February 2014, maintained
his view that the application was insufficient and lacked patentability. In light of this
lack of progress, the examiner suggested that a hearing was the best course of
action. In their letter dated 3 March 2014, the agent requested a hearing on the
outstanding issues on the case.
7 On 23rd May 2014, the Examiner issued an official letter setting out the matters to be
considered at the hearing, namely, the issue of sufficiency under Section 14(3) of the
Act and that of excluded matter as a mental act and/or a computer programme under
Section 1(2)(c) of the Act.
8 The applicant provided a skeleton argument, including a witness statement, and a
set of amended claims which were received at the Office on 9 June 2014. This
skeleton argument was very helpful in setting out the applicants views on the matters
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