Claim types and their associated inventive step issues

Louise Hollidaylch@dyoung.co.uk

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Functional◦Binding to target antigen or epitope◦Activity – qualitative or quantitative

Structural◦CDRs, VH/VL or whole antibody sequence

Source◦Obtainable from a deposited hybridoma

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“An antibody capable of binding specifically to X”

EP 07013470

1. An isolated antibody that specifically binds to a p51 protein comprising the amino acid sequence of SEQ ID No. 1

Example

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“An antibody capable of binding specifically to the epitope of SEQ ID NO:1”

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“An antibody which specifically binds to X but not to Y”

“An antibody capable of binding X and inhibiting the binding of X to XR”

“An antibody which binds X and induces apoptosis of nucleated blood cells”

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An antibody capable of binding to X, which has an affinity constant for X between 0.1 and 10 nM

An antibody which has at least 5 times higher binding activity for X than antibody Y

An antibody which causes at least 50% more lysis of target cells relative to the reference polyclonal

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Whole Ab CDRs VH + VL

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1. An antibody which is produced by the deposited cell line having ATCC No. PTA-1234.

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1. New receptor identified2. Method for screening for agonist using receptor3. Agonists identified using method

EPO/USPTO/JPO“one would have no knowledge beforehand as to whether of not any given compound…would fall within the scope of what is claimed. It would require undue experimentation (be an undue burden) to randomly screen undefined compounds for the claimed activity”

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Is that not also true for antibody claims?◦New target (X)◦An antibody capable of binding specifically to protein X

“binding specifically” often not defined Isn’t it likely that some Abs out there will cross-react? If so

claim should lack novelty. If target X is highly similar to other known targets (eg

another GPCR) is there anything inventive about an antibody to it?

Should they have to show that it is possible to make an antibody which does not cross-react?

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If there is a known antibody to the same target, it is obvious to use known techniques to improve properties of antibody

“known techniques” – e.g. chimerization, humanization, affinity maturation, Fc engineering

“improved property”- e.g immunogenicity, affinity and efficacy

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Key question:

◦Would it have been obvious to try to generate an antibody having the claimed activity with a reasonable expectation of success using known techniques?

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Was the function known/suggested as being desirable?

Are there routine ways to generate/select antibodies having that function?

Is the scale of improvement predictable?

yesyes

nono

yesyes

yesyes

nono

nono

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Quantitative definition

Epitope

Physiological effect

Molecular function

Obvious to try?

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Claim 1: originally defined by target• A human monoclonal antibody of the IgG isotype, which

specifically binds to the A2 domain of FVIII.

Prior art: Human scFv which binds the A2 domain of FVIII (made by phage display)

Ab of invention inhibited pro-coagulant activity of FVIII more than scFv of prior art

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Amended claim to specify quantitative activity◦ “inhibits up to 99% of the pro-coagulant activity of FVIII at a concentration

of 0.1 μg/ml”Not allowed

Amended claim to specify epitope◦ “the epitope of said antibody comprises the amino acid residues between

positions 484 and 508 of FVIII”Allowed

Did not have to show prior art scFv did not bind this epitope Did not have to demonstrate that binding this epitope was

associated with high inhibitory activity (ie, did not have to demonstrate any technical advantage associated with binding this epitope)

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For example

Immunogenicity

Antigen specificity

Affinity /binding

(Kon, Koff, Kd)

Mechanism of action

Neutralising Titre (Ki)

Ab stability

Epitope binding

Clearance rate

Catalytic activity

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Why do you need to demonstrate a UTE? Acceptable to provide an alternative solution to a

known problem (T92/92, T495/91) For an inventive step to be present, it is not

necessary to show improvement – substantial or gradual – over the prior art (T583/93)

c/f chemical inventions: “providing the public with a useful choice”

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Variant sequence having X% identity

Variant sequences having one or more amino acid mutations

Definition by key residues in CDRs

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EPO: the particular affinity of a given, classical antibody is the result of the precise 3D structure of its entire antigen binding region, which in turn relies on the cooperative effect of the 3 CDRs and 4 FR regions per VH and per VL domain. Replacement of amino acids within said domains is expected to result in a disturbance of the 3D structure and thus in (at least partial) disturbance of the antibody’s functionality/affinity.

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CDR variants◦ Have to convince examiner that all variants within the scope of the

claim have or would have the desired activity◦ May need to experimentally verify that specific variants retain activity

EP 070134701.An isolated human antibody, which has the following characteristics:

b) a light chain CDR3 domain comprising the amino acid sequence of SEQ ID NO:3, or modified from SEQ ID NO:3 by a single alanine substitution at position 1, 4, 5, 7 or 8;

c) a heavy chain CDR3 domain comprising the amino acid sequence of SEQ ID NO:4, or modified from SEQ ID NO:4 by a single alanine substitution at position 2, 3, 4, 5, 6, 8, 9, 10 or 11

Example

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VH/VL variants◦ Do all antibodies within the scope of the claim “solve the problem”

of the invention?◦ May be able to use variant language (e.g. % identity) in

combination with a functional definition

 EP Application No. 0372195551. An antibody or fragment thereof comprising an amino acid sequence that is at least 85% identical to a VH domain...wherein said antibody or fragment thereof specifically binds a CK-B4 polypeptide and inhibits or abolishes the ability of a CK-B4 polypeptide to induce calcium flux of a cell expressing CCR6.

Example

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There are various different types of patent claim which may be used for antibodies

Each is associated with a particular type of inventive step objection

The EPO position varies between surprisingly lenient and surprisingly harsh depending on the type of claim

Where possible it is good to include multiple claim types and fall back positions to provide flexibility for amendment and argumentation during prosecution