Reach-Through Patent Claims in Biotechnology : An Analysis of the Examination Practices of the United States, European and Japanese Patent Offices

The increase in the number of reach-through claims filed in the field of biotechnology has been a cause for concern. In 2001 the United States Patent and Trade Mark Office, the European Patent Office and the Japan Patent Office (jointly referred to as the 'Trilateral Offices') conducted a comparative study of their patentability standards and examination strategies towards biotechnology reach-through claims. The report of the study concluded that the three Offices had similar examination approaches. However, the report did not make clear which of the claims would be granted by each of the Offices. Also, the report did not explain the concept of the reach-through claim. This article seeks to understand and further clarify the concept underlying a reach-through claim in biotechnology. First, we conceptualise and define a reach-through claim. We then use this definition to identify the reach-through claims within the hypothetical claims of the Trilateral Offices study. Further, we analyse the Trilateral Offices' assessment of the validity of all the hypothetical claims with respect to each of the patent law requirements of utility (industrial applicability), written description (clarity and support of claims) and enablement (sufficiency of disclosure). As a result of our analysis, we show that the application of the three mentioned patent law requirements by the Trilateral Offices does in fact filter out from grant those claims which may be properly considered to be reach-through claims