Monday, November 23, 2020 T 1631/17 - Not-explicit claim features cause exception to patentability

The invention relates to a  method of making dental prostheses using settable dental prosthetic material. The method is more efficient than existing methods since an impression is used of a human denture in which missing tooth substance is supplemented. 

Although not claimed, typically one would first provisionally repair the teeth and take an impression of the "finished" denture. In this way the desired external shape of the denture can be designed directly by the dentist on the patient and the production of the denture parts by the dental technician can be simplified considerably.

Even if not explicit, the Board considers that the claim still encompasses a surgical step, and so is excluded from patentability. 

The decision is in German. Below an machine translation of part of the decision is given, and below that a more extensive selection of the original German. 

Friday, February 19, 2016 T 475/12 - Medical examination may be a treatment

Camera unsuitable for in-vivo use

Can a method or examination become a treatment just because some of its steps may have a therapeutic effect? Claim 1 of the main request is a medical examination method that comprises administering a laxative to a subject, before the subjects swallows an in-vivo imaging device.

According to the applicant the laxative enables a better collection of data through the in-vivo imaging device. Administering the laxative should not be seen as a therapeutic step.

The board has a different opinion. If the subject happens to have constipation, the examination method might be therapeutic. Moreover, the laxative may prevent complications.

The applicant tries to save the claims by inserting the word non-therapeutic, but the Board does not accept this either (see the end of the decision).

Friday, December 11, 2015 T 2369/10 - Second medical use of products

Medical Instruments

The applicant found a new medical use for an existing product; namely treatment of substance addiction using a neurostimulator.
 
Normally a product is not made novel merely by identifying a new use for the product. Although, a use claim or a method claim may be possible, a purpose limitation for a product must imply technical differences in the product itself for it to be novel. 

However, if the new use is a medical one, the option of method and use claims are blocked by article 53(c) EPC, which forbids patenting of medical methods (see the articles for details). Fortunately for medical researchers, an exception is made to the general rule;  a new medical use for "any substance or composition" will provide novelty (articles 54(4), 54(5) EPC, G 5/83).

But what if someone invents a new medical use for a product which is not a substance or composition? The possibility of a method or use claim is blocked by article 53(c) EPC.  The lack of novel technical differences blocks the product claim. Although, article 54 does not explicitly allow the application to products which are not substance or composition, it is not forbidden either. 

The board declined the invitation though, and ruled that no novelty is obtained by a medical purpose limitation if the object is not a substance or composition. A request to  refer questions to the Enlarged board was denied. 

No Catchword or headnote is provided but reasons 8.1 give the following summary.

In the present case, the Board holds that, having regard to the wording of Article 54(4),(5) EPC, the ordinary meaning of this Article shall not be extended so as to include something which is not explicitly provided for.

Consequently the Board considers that there is no basis to contemplate that novelty may be conferred on products, other than substances and compositions, by virtue of the provisions of Article 54(4),(5) EPC.

Friday, March 27, 2015 G 2/12 and G 2/13 - Fruit and veggies

On 25 March 2015 the Enlarged Board of Appeal published the consolidated decisions G 2/12 (Tomatoes II) and G 2/13 (Broccoli II). Whereas the EBoA decided in G 1/08 (Tomatoes I) and G 2/07 (Broccoli I) that the processes as claimed in the respective patents at stake were not allowable under Article 53(b) EPC (that indicates that plants and plant varieties or essentially biological processes for the production of plants are unpatentable), the EBoA now came to the (not unexpected) conclusion that this article in the EPC does not prevent patenting the plant products (e.g. fruit and edible parts of the plant) that may be obtained by such processes. Interestingly, all parties involved (patent proprietors, opponents as well as the President of the EPO) agreed with this notion, before the EBoA confirmed it.
The EBoA once again stresses the difference between a product claim, a process claim and a product-by-process claim, the latter being a product claim that should be addressed for patentability separate from the process that is used to produce it.

The EBoA concluded earlier in G 2/07 and G 1/08 that the legislator's intention (Article 53(b) EPC) had been to exclude from patentability those plant breeding processes which were the conventional methods of plant-variety breeding at the time. 
Article 53(b) EPC is about an essentially biological process that cannot be patented. But if one claims a product (not a plant or a plant variety) that may be obtained by such excluded process, such product may very well be patentable and is explicitly not excluded from patentability under Article 53(b) EPC, solely because it was obtained by the unpatentable process.  

Notably, and the EBoA admits this, in some EPC contracting states, including Germany and the Netherlands, the patent law deviates from the EPC by explicitly excluding patentability of products obtained by essentially biological processes (e.g. see Art. 3(1)(d) ROW 1995). The EBoA indicates that such is not the case in the EPC.

Ergo: not all is lost for parties pursuing European patent protection for commercial plant products (like fruit) when the process leading to such products falls under the exclusion of Article 53(b) EPC, at least not in all contracting states of the EPC.

Tuesday, March 16, 2010 G 1/07 - Treatment by surgery

Case: G1/07, Medi-Physics, Inc.

The Enlarged Board of Appeal of the European Patent Office has recently issued their decision in referral G1/07, about the interpretation of the expression "methods for treatment of the human or animal body by surgery". Such methods are excluded from patentability according to Art. 53(c) EPC 2000. The application which is the subject of the referring decision is about an imaging method in which Xe-129 is used as a contrast agent. The scope of the claims encompasses an injection of polarized Xe-129 into the heart.

In the decision, the Enlarged Board makes some interesting remarks First, it is stated in the decision that the Vienna Convention does not provide a general principle of narrow interpretation of exclusions from patentability. Rather, the Vienna Convention gives the general rule that a treaty shall be interpreted in good faith in accordance with the ordinary meaning to be given to the terms of the treaty in their context and in the light of its object and purpose.