The Commissioner made a decision on November 1, 2010 (the 2010 decision), our summary found here, in respect of a patent application relating to monoclonal antibodies. The Applicant asserted that he had not had the opportunity to address two issues that were considered in reaching the 2010 decision. The Patent Appeal Board (PAB) reconvened to hear argument with respect to these two issues, namely the scope of a broad claim in relation to target polypeptides, and support for the utility of the claimed antibodies.
With respect to the first issue, the PAB maintained the recommendation made in the 2010 decision. In particular, the PAB indicated that the scope of the claim should be limited to antibodies capable of specifically binding the target polypeptide set out in the figures in the patent application.
With respect to the second issue, the PAB noted first that the Applicant was required to rely upon a sound prediction of the utility. The PAB confirmed its finding in the 2010 decision that the factual basis in the patent application does not provide a sound line of reasoning to support the promised utility. In particular, the PAB found that the factual basis indicates only that the antibodies have the ability to bind to the target antigen, and not necessarily to antagonize the activity of the targets and lead to an anti-inflammatory effect.