EPLAW Patent Blog

EPO - Enlarged Board of Appeal decides on the exclusion from patentability of “essentially biological processes”

EPO, Enlarged Board of Appeal, decision of 9 December 2010 in consolidated cases G 2/07 - Broccoli/PLANT BIOSCIENCE and G 1/08 – Tomatoes/STATE OF ISRAEL

The Enlarged Board of Appeal (EBA) answered the question referred to it by Technical Board of Appeal in T 83/05 (OJ EPO 2007, 644) and T 1242/06 (OJ EPO 2008, 523) as follows:

“1. A non-microbiological process for the production of plants which contains or consists of the steps of sexually crossing the whole genomes of plants and of subsequently selecting plants is in principle excluded from patentability as being "essentially biological" within the meaning of Article 53(b) EPC.

 

EPO - News from the Enlarged Board of Appeal of the EPO

EPO - News from the Enlarged Board of Appeal of the EPO (Oral proceedings in cases G 2/07 and G 1/08 and two new referrals to the EBA) reported by Rudolf Teschemacher, Bardehle & Pagenberg

EPO, Enlarged Board of Appeal
Oral proceedings in cases G 2/07/BROCCOLI and G 1/08/TOMATOES

The oral proceedings were accompanied by protests outside the EPO-building of groups opposed to patents in the field of plants. The public interest in the cases is also illustrated by some 130 amicus curiae briefs filed in consolidated proceedings G 2/07 and G 1/08.

The points of law referred to the Enlarged Board of Appeal in decisions T 83/05 (OJ EPO 2007, 644) and T 1242/06 (OJ EPO 2008, 523) concern the scope of the exclusion from patentability for essentially biological processes for the production of plants in Art 53 b) EPC. Previous case law held that the question whether or not a process is to be considered “essentially biological” within the meaning of this provision has to be assessed on the basis of the invention as a whole taking into account the totality of human intervention and its impact on the result achieved. In 1999, a provision implementing Art. 2 (2) of the EU Biotechnology Directive was introduced into the Implementing Regulations to the EPC. Rule 26 (5) EPC stipulates that a process for the production of plants is essentially biological if it consists entirely of natural phenomena such as crossing or selection.

EPO - Enlarged Board of Appeal decides on dosage regime - Swiss-type claims no longer available

EPO, Enlarged Board of Appeal, 19 February 2010, Decision No. G 02/08 - Dosage regime/ABBOT RESPIRATORY

The Enlarged Board of Appeal (EBA) answered the questions referred to it in T 1319/04 (OJ EPO 2009, 36) as follows:

Question 1:

Where it is already known to use a medicament to treat an illness, Article 54 (5) EPC does not exclude that this medicament be patented for use in a different treatment by therapy of the same illness.

Question 2:

Such patenting is also not excluded where a dosage regime is the only feature claimed which is not comprised in the state of the art.

Question 3:

Where the subject matter of a claim is rendered novel only by a new therapeutic use of a medicament, such claim may no longer have the format of a so called Swiss-type claim as instituted by decision G 5/83. A time-limit of three months after publication of the present decision in the Official Journal of the European Patent Office is set in order that future applicants comply with this new situation.

EPO - G 04/08 Enlarged Board / Language of Proceedings

EPO, Enlarged Board of Appeal, 16 February 2010, Decision No. G 04/08

If an international PCT application has been filed and published in one of the official EPO languages, it is not possible to (upon entry into the European phase) file a translation of the application in one of the two other languages. The EPO bodies may not use themselves in the written procedure one of the official EPO languages other than the official language that was used for the application (Art. 14(3) EPC).

Read the decision (in French) here.

Read a summary in English (provided by Bardehle Pagenberg) here.

EPO - G1/07 Enlarged Board decides on "methods for surgery" exception ex Art. 53(c) EPC

EPO, Enlarged Board of Appeal, 15 February 2010, Decision No. G 1/07

The Enlarged Board of Appeal decides on scope of exception to patentability for inventions related to surgery.
Not excluded as surgical treatment are:

- Insignificant physical interventions
- Imaging methods to be used during surgery
- Methods only concerning the internal operation of a device

Read the decision (in English) here.

Read a summary in English (provided by Bardehle Pagenberg) here.

EPO - Enlarged Board of Appeal of the EPO dismisses objections to its composition in review cases

Nickel-based metallic material/Leibniz Institut für Festkörper- und Werkstofforschung, Enlarged Board of Appeal, EPO, 3 December 2009, Docket No. R 12/09, not to be published in OJ

In this case, a petitioner objected for the first time to the way in which the EBA is composed in review cases. The EBA dismisses the objections as it is clear according to the EBA that the legislator had taken the deliberate decision to entrust the EBA as an existing body the task of examining petitions for review. Being aware of the fact that all technical members and most of the legal members of the EBA were also members of the Boards of Appeal, it was the legislator’s clear intention that these members should act in review cases.