Netherlands - Sufficiency of Description Needed to Support Patent Claim

Newsletters and Bulletins / February 2002 / Netherlands

In the case of Boehringer Mannheim v. Kirin Amgen, the Hague Court of Appeal was faced with the question of the amount of disclosure required in a patent specification to support a claim for a DNA sequence coding for erythropoietin that was at least in part defined in functional terms. The Court stated that normally a four prong test should be applied requiring that:

(1) at least one method for producing novel compounds of the claimed group must be described;

(2) there must be examples showing how to produce specific compounds;

(3) there must be examples showing that these specific compounds have the desired therapeutic effect; and

(4) the specific examples must be "uniformly spread" over the claimed group.

In the case before it, the court concluded that these requirements had been met. They seem, however, to be different from the test normally applied by the European Patent Office in examining applications and so may impose an additional burden on applicants seeking protection in this field.

February 2002 Index

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