Decision Nº O/579/18 from Intellectual Property Office - (Patent decisions), 18 September 2018
| Judge | Dr L Cullen |
| Court | Intellectual Property Office (United Kingdom) |
| Patent Number | GB1219768.7 |
| Administrative Decision Number | O/579/18 |
| Date | 18 September 2018 |
| Parties | EOS Neuroscience, Inc. & Wake Forest University Health Sciences, Inc. |
BL O/579/18
18 September 2018
APPLICANT
EOS Neuroscience, Inc.
and
Wake Forest University Health Sciences,
Inc.
ISSUE
Whether patent application GB1219768.7
complies with Sections 1(1)(b) and 4A of the
Patents Act.
HEARING OFFICER
Dr L Cullen
DECISION
Introduction
1 This decision concerns patent application GB1219768.7 entitled “Methods and
compositions for decreasing chronic pain" in the names of EOS Neuroscience, Inc.
and Wake Forest University Health Sciences, Inc. (hereafter the applicant). More
specifically, it concerns whether the invention claimed in this application is inventive
as defined in Section 1(1)(b) and Section 3 of the Patents Act 1977 (hereafter the Act);
and whether it relates to a non-patentable method of treatment or diagnosis as defined
in Section 4A of the Act.
Background
2 This application was filed under the provisions of the Patent Cooperation Treaty (PCT)
on 05 April 2011, claiming an earliest priority date of 05 April 2010, and was initially
published as WO 2011/127088 on 13 October 2011. On entering the national phase
in UK, it was subsequently re-published as GB 2492719 on 09 January 2013.
3 Between May 2015 and October 2017, there was an extensive correspondence,
including proposed amendments, between the applicant and the examiner dealing with
this case. While an initial objection under novelty was successfully addressed by the
applicant, the examiner has maintained throughout that the invention (as variously
claimed) lacks inventiveness over the cited prior art. Latterly, the examiner has also
argued that the application relates to a non-patentable method of treatment or
diagnosis, specifically, a method of surgery.
2
4 In the Agent's letter dated 20 October 2017, the applicant requested a decision from
a senior officer based on the papers currently on file. In addition to the set of claims
already on file (referred to as Main Request claims dated 11 October 2017), the
applicant also included a first auxiliary amended claim set and a second auxiliary
amended claim set. The applicant asked that the senior officer consider each of these
three claim sets in turn as part of their decision. The applicant argued that each of
these claim sets were inventive over the cited documents and did not relate to a non-
patentable method of surgery.
5 As set out in the pre-hearing report of 26 October 2017, the examiner considered that
the main request claim set and both auxiliary request claim sets lack an inventive step
and that the main request claim set and the first auxiliary request claim set each relate
to a non-patentable method of surgery.
6 The matter came before me for a decision based on the papers on file. Senior
examiner Dr Simon Grand acted as assistant to the Hearing Officer on this case.
The Application
7 This application falls in the field of optogenetics and nociception. Optogenetics
combines techniques from optics and genetics to control and monitor the activities of
cells, such as neurons (nerve cells), in living tissue. Opsins are a group of light-
sensitive proteins, which use a chromophore to convert photons of light into
electrochemical signals. Microbial opsins, also referred to as Type I opsins, form ion
channels or proton/ion pumps and are activated directly by light. They are used in
optogenetics to switch on or off neuronal activity. Such opsins include
channelrhodopsin (ChR2), halorhodopsin (NpHR), and archaerhodopsin (Arch).
Expression of such proteins is controlled using a light source of appropriate
wavelength.
8 Neurons use the electrical currents created by depolarization to generate
communication signals (e.g., nerve impulses) in the body. Such cells use rapid
depolarization to transmit signals throughout the body and for various purposes, such
as motor control (e.g., muscle contractions), sensory responses (e.g., touch, hearing,
and other senses) and computational functions (e.g., brain functions). By facilitating
or inhibiting the flow of positive or negative ions through the cell membranes, such
cells can be briefly depolarized, depolarized and maintained in that state, or
hyperpolarized. Control of this depolarization process can be beneficial for a number
of different purposes, including treatment of disease and related pain experience
where control of visual, muscular or sensory function is important. Light-sensitive
protein channels, pumps, and receptors permit millisecond-precision optical control of
cells. Although light-sensitive proteins in combination with appropriate wavelengths
of light can be used to control the flow of ions through cell membranes, the targeting
and delivery of such proteins to cells requires additional steps related to the specific
diseases, disorders, or pain circuits of interest.
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