Reach Through Claims
Reach-through claims
This article explains what a “reach-through” claim is and then discusses the patentability of reach-through claims. The patentability of reach-through claims has particular importance for the protection of fundamental research which could be used in the subsequent development of biological or chemical therapeutic entities. This topic is important not just in terms of the protection of fundamental research inventions in these areas, but is also important in terms of assessing freedom to operate in these areas.
What is a reach-through claim?
Claims are the part of a patent application which set out the scope of protection which is sought. In a granted patent, the claims set out the scope of the monopoly given by the patent. For example, if an inventor discovers a new chemical entity which can be applied to the treatment of disease, they can usually claim some or all of: the chemical entity per se, the chemical entity for use as a medicament, use of the chemical entity for the manufacture of a medicament for a specified therapeutic application and a method of manufacturing the new chemical entity.
Reach-through claims seek to protect things which have not yet been discovered by an inventor, but which might be discovered in the future by making use of their invention. When an invention is made in a widely applicable basic research technology (referred to herein as an "upstream" technology), it is often possible to envisage future technologies (referred to as "downstream" technology) which might be developed using the basic research technology. If the inventor of an upstream invention files a patent application for the upstream invention and attempts to claim downstream inventions which they have not as yet actually made, then the claims to those downstream inventions are referred to as "reach-through" claims.
For example, someone who discovers a new protein which might be suitable for use as a drug target may not be
This article explains what a “reach-through” claim is and then discusses the patentability of reach-through claims. The patentability of reach-through claims has particular importance for the protection of fundamental research which could be used in the subsequent development of biological or chemical therapeutic entities. This topic is important not just in terms of the protection of fundamental research inventions in these areas, but is also important in terms of assessing freedom to operate in these areas.
What is a reach-through claim?
Claims are the part of a patent application which set out the scope of protection which is sought. In a granted patent, the claims set out the scope of the monopoly given by the patent. For example, if an inventor discovers a new chemical entity which can be applied to the treatment of disease, they can usually claim some or all of: the chemical entity per se, the chemical entity for use as a medicament, use of the chemical entity for the manufacture of a medicament for a specified therapeutic application and a method of manufacturing the new chemical entity.
Reach-through claims seek to protect things which have not yet been discovered by an inventor, but which might be discovered in the future by making use of their invention. When an invention is made in a widely applicable basic research technology (referred to herein as an "upstream" technology), it is often possible to envisage future technologies (referred to as "downstream" technology) which might be developed using the basic research technology. If the inventor of an upstream invention files a patent application for the upstream invention and attempts to claim downstream inventions which they have not as yet actually made, then the claims to those downstream inventions are referred to as "reach-through" claims.
For example, someone who discovers a new protein which might be suitable for use as a drug target may not be