In patent law, the term reach-trough claims refers to claims covering future inventions which are, however, not sufficiently disclosed in the application. In 2001, in order to harmonize the treatment of reach-through claims within the context of the “Trilateral Project” in existence since 1983, the European, Japanese and US patent offices coordinated their handling of these claims (Trilateral project B3b, 2001, “Report on Comparative study on biotechnology patent practices Theme: Comparative study on `reach-through claims´”). A consensus was reached, that the subject-matter of the claims should essentially be limited to the invention explicitly disclosed in the application.
Experience shows, that the patent offices, including the European Patent Office, strictly enforce this restrictive policy for the treatment of reach-through claims. A recent example for this is the decision T 1063/06 of the Technical Board of Appeal 3.3.10 of the EPA, dated February 3, 2009. The applicant requested a claim that reads as follows: “Use of compounds, which are also capable of stimulating the soluble guanylate cyclise independently of the heme group in the enzyme, to manufacture medicaments for the treatment of cardio-vascular disorders such as angina pectoris, ischemia and cardiac insufficiency”.
Structurally defined compounds with the desired properties were only disclosed in the dependent claims of the application. However, the applicant did not want to be limited by this in order to overcome the corresponding objection of insufficient disclosure (Art. 83 EPC) and claimed nothing less than all yet to be identified compounds with the desired properties. In the absence of any rules for selecting the compounds in the application in suit and without the possibility of falling back on common general knowledge, somebody would first have to discover the desired compounds in order to realize their utilization as a medicament as per the invention. According to the EPO, the claim was nothing but an attempt at gaining protection for medical compounds with the desired function and therefore for an unfinished invention. The claim thus was rejected based on Art. 83 EPC. Decision T 1063/06 falls squarely within the established case law on reach-through claims (compare also the journal article “Reach-Through Ansprüche” (“Reach Through Claims”) available for download from this website).