Some chemical compounds or compositions have uses in improving the state of skin or hair. For example, a composition composed of polygonum multiflorum and a hair growth promoting component can be used in hair treatment. On one hand, the composition could strengthen the hair of a healthy human, and on the other hand, it could contribute in treating some hair diseases such as alopecia areata. This means that the composition has both cosmetic and therapeutic uses. Regarding such a composition and the use thereof, how can we draft a claim for protection in China?

    Of course, we can include a composition claim in a patent application to pursue a broad scope, and this is our most preferable option. However, if the composition of the two components has already been disclosed by the prior art for the product per se or other use of it, we may need to turn back to its specific use in hair treatment. Then, can we draft it as "Use of a composition... in hair treatment"? 

    Let's make a rough analysis. This use claim covers two situations, one is to use the composition for hair treatment so as to achieve the therapeutic effect on some hair diseases, and the other is to use it for hair treatment so as to achieve the strengthening of hair in a healthy human (more dense and dark hair) and thus get a good hair appearance. The first situation is actually to achieve a therapeutic aim and is practiced on a living human, and thus may be considered by Chinese examiners as belonging to methods for treating diseases, and will not be granted a patent right. Therefore, the above claim which covers the method for treating hair diseases will be rejected according to Article 25 of Chinese patent law. 

    Considering the un-patentable subject matter rejection, we could divide the hair use claim into two independent claims, a cosmetic use claim and a therapeutic use claim. 

    Specifically, the cosmetic use could be directly drafted as "Use of composition... in cosmetic hair treatment". Of course, it could also be drafted in many other forms, such as "Use of composition ... as a cosmetic hair strengthener of hair". In addition, we could also draft the use as a method claim, e.g., "A cosmetic method for hair treatment comprising applying a composition... onto hair". Since these claims are for cosmetic purposes, they do not belong to methods for treating diseases. For this kind of claims, some Chinese examiners, who are more conversed and strict on language expression, may require the applicant to specifically define "non-therapeutic" in the claims and thus clearly exclude the therapeutic aim of the use. In order to meet such a requirement of the examiners, we could further define that "wherein the use/method is for a non-therapeutic purpose" in the claims. 

    By the way, it should be noted that not all cosmetic methods are allowable according to Chinese patent law. For example, cosmetic surgery methods will be considered as lacking practical applicability and thus not be granted a patent right. 

    Back to our discussion, for the second situation (therapeutic use) covered by the hair treatment, we could also draft a suitable independent claim to pursue the protection thereof. As known to most applicants, a therapeutic use/method which is unallowable in China could be amended to a Swiss-type use claim, such as "Use of ... in manufacture of a medicament for treating ...".  Thus, the therapeutic use of the composition could be drafted as "Use of a composition... in manufacture of a medicament for treating hair diseases". 

    For the two independent claims mentioned above, some dependent claims could be added accordingly to make a further definition. For example, for the therapeutic use, some dependent claims could be included to define the specific diseases and the related pharmaceutically acceptable excipients; while for the cosmetic use, dependent claims could be related to the possible cosmetic additives. 

    In addition, someone may question whether these two independent claims have unity therebetween and whether they could be pursued in a single application, we believe the answer may be positive according to our practice. The cosmetic use and the therapeutic use are both around the treatment of hair by the composition and both derived from the discovery of the effects of the composition on hair, which is not disclosed or suggested by prior art, and thus the two uses shall be considered as belonging to a single inventive spirit and having unity. 

    On the basis of the above analysis, we can conclude that in cases where the inventive compound or composition has dual use in the cosmetic and therapeutic industries, it is recommended to pursue the use in two kinds of claims, one relating to the cosmetic use and the other relating to the medicament manufacture use. The two kinds of claims could constitute a comprehensive protection for the use. Applicants can prepare a draft at the application filing stage or make claim amendments when responding to office actions with reference to this.   

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    Related regulations and information for reference:

    * According to Article 25 of Chinese Patent Law, for any of the following, no patent right shall be granted:

(1) scientific discoveries;

    (2) rules and methods for mental activities;

    (3) methods for the diagnosis or for the treatment of diseases;

    (4) animal and plant varieties;

    (5) substances obtained by means of nuclear transformation;

    (6) designs of two-dimensional printing goods, made of the pattern, the color or the combination of the two, which serve mainly as indicators.

    For processes used in producing products referred to in items (4) of the preceding paragraph, patent right may be granted in accordance with the provisions of this Law.

    * According to Guidelines for Examination, the following methods are examples which do not belong to methods of treatment for diseases, and shall not be excluded from patentability under Article 25:
Methods of purely cosmetic nature, i.e. ,methods of cosmetic nature which are not invasive to human body or do not produce wounds, including methods of deodorization, protection, decoration, or beautification for non-treatment purpose practiced partially on such directly visible parts as skin, hair, nail, and teeth externals. 

    * According to Guidelines for Examination, methods of surgery include those for treatment purposes and those for non-treatment purposes. Methods of surgery for treatment purposes are falling within the range of methods for treating diseases, and thus are un-patentable subject matter. Methods of surgery for non-treatment purposes do not have practical applicability because these methods are practiced on the living human or animal body and cannot be used industrially. Examples of this kind include methods of surgery for cosmetic purposes. 

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.