EPLAW Patent Blog

EPO - TBA issues further decision on automatic genotype determination in the field of bioinformatics

"DNA Mixture Analysis/PERLIN", Perlin, Mark W. (applicant), Technical Board of Appeal 3.3.08, 19 February 2013, Case No. T 2050/07, reported by Stefan V. Steinbrener, Bardehle Pagenberg

At present, there are virtually no decisions of EPO boards of appeal in the field of bioinformatics. On one of the rare occasions (case T 784/06 "Genotype determination/Beckman" of 23 June 2010; see EPLAW Patent Blog of 27/10/2010), Board 3.3.08 (albeit in a different composition) decided that mathematical steps included in a method of determining the genotype at a locus within genetic material obtained from a biological sample were to be ignored in assessing inventiveness if they did not interact with technical activities so as to lead to a "tangible technical result".

This finding arrived at by reasoning an absence of interaction from a lack of detailed disclosure was somewhat surprising, in particular since on the one hand no objection under Art. 83 EPC was raised; on the other hand it seemed to lose sight of the intended focus on the solution of a technical problem. The decision thus appeared to rely heavily on specific deficiencies of the case and did not answer the question of whether such mathematical steps more or less necessarily performed by computer processing might in principle make technical contributions in biotechnology.

EPO - The inescapable trap enlarged

EPO, Technical Board of Appeal  3.2.04, 28 September 2009, Decision No. T 567/08 – Unilever v. Plasticos and Colgate-Palmolive

As to the problem of added subject-matter, EPO practice exhibits a specific feature which is dangerous for the patentee in opposition proceedings. If the EPO considers a limiting amendment, made and allowed in grant proceedings, to have added new matter, the patentee falls into the inescapable trap created by the Enlarged Board of Appeal in decision G 1/93: The amendment cannot remain in the claim because of the prohibition of adding new matter in and it cannot be removed from the claim because of the prohibition of extending the scope of protection after grant.