We all know that it is important to protect our skin from the sun, but can we obtain protection for our suncream? The recently published decision T 2275/18 from the European Patent Office considers the extent to which a method of using a composition that provides UV protection can be patentable.
It is well established that methods of treatment by surgery or therapy are excluded from patentability in Europe. In this decision, the Board of Appeal consider whether a method of applying a composition that provides UV protection is always inherently therapeutic and therefore not patentable according to Article 53(c) EPC.
The case concerns an appeal filed by an opponent against a decision of the opposition division to reject claim 14 of the main request of EP2934458. The patent in question relates to an active mixture containing butyl methoxydibenzoylmethane (BMDM), a known UVA screening agent.
The opposition division determined that a personal care composition containing BMDM inevitably prevents or reduces the risk of pathological conditions caused by UV damage. Therefore, the prophylactic effect of the UV protection agent cannot be separated from the cosmetic use of the composition. Accordingly, the Opposition Division determined that UV protection is inherently therapeutic. From this conclusion, it follows that all methods of applying a composition that contains an ingredient providing UV protection are not patentable regardless of the disclaimer.
During appeal, the board determined that the application disclosed both therapeutic uses and non-therapeutic uses. In particular, the composition was disclosed in the application for use in products such as shampoo, hair conditioners and shower gel. Since sun screening agents are only active when exposed to UV radiation these applications would not provide UV protection, even as an unavoidable side effect. Therefore, the board considered the claim could be construed in view of the disclaimer, to non-therapeutic applications of the composition.
The Board considered that the approach of the opposition division that the prophylactic effect against sunburn could not be separated from cosmetic uses when applying a composition containing a UV screening agent to human skin was far too broad. The board highlighted that applying this approach would interpret standard daily activities such as washing or wearing clothes as providing a therapeutic benefit. Since sun screening agents are only active when exposed to UV radiation. Therefore, the board held that using such an agent as a shower gel, for example, could not be considered to provide a therapeutic treatment. As a result, the Board felt that the method of application to human skin of a personal care composition comprising known sunscreen agents could be both therapeutic and non-therapeutic and found the claim to be allowable by virtue of the disclaimer.
In summary, the application of UV protection agents per se is evidently not patentable, as it represents excluded subject matter. However, the inclusion of a UV protection agent in a composition does not inherently prevent the application of such a composition from being patentable. This case highlights the importance of including all foreseeable uses of a product when drafting an application in order to provide scope for protection against unexpected objections.