Revision of the Examination Guidelines - Claims with a Limitation by Use
Typical examples of “claim with a limitation by use” are
“A compound X for disease Y.”
“A compound for disease Y represented by the formula X.”
In Europe, these claims can be written as a second medical use (Swiss-type) claim:
“Use of compound X in the manufacture of a medicament effective in the treatment of disease Y.”
The revised Examination Guidelines state that “claims with a limitation by use” can be categorized into two groups. One is related to an invention with a specific configuration, structure, formulation, etc. which is especially suitable for a specific usage (hereinafter “Type 1”). The other is a so-called “Use Invention” which is defined by a newly discovered use for a product (hereinafter “Type 2”). Type 1 and 2 look similar, but difference can be understood by comparing the following examples cited by JPO. For chemical inventions, Type 2 inventions often relate to a new usage for a known compound as a whole while Type 1 inventions relate to a preferred usage of a specific structure or formulation of a known compound.
Type 1
“An iron alloy for piano wire having formulation A.”
If this claim can be interpreted as an iron alloy with formulation A having a specific lamellar structure that is especially suitable for piano wire, the claimed invention has novelty over an iron alloy for a gearwheel having formulation A but which does not have the specific lamellar structure. The structure of the claimed iron alloy is apparently different from that of the iron alloy for the gearwheel.
Type 2
“A composition for fouling prevention on a ship bottom comprising a ‘specific’ quaternary ammonium salt.”
If the prevention of fouling on ship bottoms is a newly discovered usage for the “specific” quaternary ammonium salt, the claimed invention has novelty over a composition for the electrodeposition of a coating comprising the “specific” quaternary ammonium salt. Two usages are distinguishable and the use limitation “fouling prevention on a ship bottom” is helpful in identifying the formulation of the claimed invention.
A Caution in the revised Examination Guidelines warns about claims with “property” or “effect” limitations.
“A compound X having an anticancer property” is not novel if the anticancer property is an inherent property of compound X.
“Yoghurt for strengthening bones comprising component A” is not novel over “yoghurt comprising component A” even if “strengthening bones” is a newly discovered effect. Both yoghurts are used as food and “Yoghurt for strengthening bones comprising component A” does not provide a new “usage”.