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Patenting a method of treatment by surgery: the EPO rules

By Johanna Gibson, David Pearce, Jeremy Phillips and Ilanah Simon.

The IPKat is excited to report that the decision of the Enlarged Board of Appeal of the European Patent Office in Case G 1/07 (MR methods for imaging pulmonary and cardiac vasculature and evaluating blood flow using dissolved polarized Xe) has now been published on the EPO's website. You can read the decision in full here. Frustratingly for those who like to cut and paste, this decision, which is 76 pages in length, has been uploaded as a slightly off-centre pdf and the text can't conveniently be cut-and-pasted.

For the record, the Enlarged Board has ruled as follows:

"1. A claimed imaging method in which, when carried out, maintaining the life and health of the subject is important and which comprises or encompasses an invasive step representing a substantial physical intervention on the body which requires professional medical expertise to be carried out and which entails a substantial health risk even when carried out with the required professional care and expertise, is excluded from patentability as a method for treatment of the human or animal body by surgery pursuant to Article 53(c) EPC.

2a. A claim which comprises a step encompassing an embodiment which is a "method for treatment of the human or animal body by surgery" within the meaning of Article 53(c) EPC cannot be left to encompass that embodiment.

2b. The exclusion from patentability under Article 53(c) EPC can be avoided by disclaiming the embodiment, it being understood that in order to be patentable the claim including the disclaimer must fulfil all the requirements of the EPC and, where applicable, the requirements for a dlsclaimer to be allowable as defined in decisions G 1/03 and G 2/03 of the Enlarged Board of Appeal.

2c. Whether or not the wording of the claim can be amended so as to omit the surgical step without offending against the EPC must be assessed on the basis of the overall circumstances of the individual case under consideration.

3. A claimed imaging method is not to be considerred as being a "treatment of the human or animal body by surgery" within the meaning of Article 53(c) EPC merely because during a surgical intervention the data obtained by the use of the method immediately allow a surgeon to decide on the course of action to be taken during a surgical intervention".

This is more or less what the IPKat had been expecting: a ruling which affirms the accepted practice on disclaimers and which limits itself closely to the characteristics of the invention the refusal to patent which was the subject of the appeal. He suspects though that his more knowledgeable readers will have a good deal more to say.

Full post as published by IPKat on February 16, 2010 (boomark / email).