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Claims shall be supported by description (Section 25(5)(c))

Reach-through claims

5.111 Reach-through claims generally occur where an invention relates to an upstream or platform technology, and the claims are drafted in such a way as to claim future downstream innovations that make use of that technology. The claims are essentially “reaching” through to claim matter that is not actually disclosed in the specification, but may be developed using the invention.

5.112 Reach-through claims have most often arisen in the field of biotechnology. A common situation involved screening techniques and claims of the following type:

1. Purified receptor X having SEQ ID NO 1.

2. Method of screening for inhibitors of receptor X comprising the following steps …

3. Inhibitors identified by the method of Claim 2.

In this case, Claim 3 is a reach-through claim. This covers any inhibitors that are identified by the screening method, but in most cases the description will enable few, if any, specific inhibitors. This raises two issues:

(1) if the specification screens libraries of known compounds then the mere identification of a new property of a known compound will not confer novelty on that compound. The claim will lack novelty;

2) enablement will only be provided for any specific compounds (or classes of compounds) disclosed in the description. It would otherwise be an undue burden for the skilled person to isolate and characterize all potential compounds, without any effective pointer to their identity. A claim is insufficient if the specification merely constitutes an invitation for the skilled person to perform a research programme (Eli Lilly v Human Genome Sciences [2012] EWCA Civ 1185)

5.113 There is no case law from Singapore or Europe that relates specifically to reach through claims, however, there is a consensus that such claims are not allowable as their scope extends beyond what has been disclosed in the description (see, for example, the trilateral report on reach through claims). This practice was also affirmed in the judgment of the US Federal Court of Appeal case University of Rochester v G.C Searle & Co 358 F.3d 916 (Fed. Cir. 2004).