BROCCOLI REHEATED – SECOND REFERRAL TO THE EPO ENLARGED BOARD OF APPEAL

On July 8, 2013, EPO Technical Board of Appeal 3.3.04 handed down the interlocutory decision in case T83/05 (also known as the "Broccoli Patent"), thus referring further questions concerning the patentability of plants to the EPO Enlarged Board of Appeal. (EBA) This second referral is pending as case G2/13. The first referral in this matter resulted in EBA decision G2/07 that had clarified the circumstances under which plant breeding methods are excluded from patentability as essentially biological processes for the production of plants (cf. Newsletter issue of February 2013).

The second referral now aims to establish whether plants or plant parts (i.e., edible portions or seed) obtained from non-patentable breeding methods are as such patentable.

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PATENTABILITY OF EMBRYONIC STEM CELLS – NEW REFERRAL TO THE CJEU

The intense and controversial debate on the patentability of embryonic stem cells in Europe has recently entered another round. On April 17, 2013, the High Court of England, in Case [2013] EWHC 807 (Ch) (International Stem Cell Corporation v Comptroller General of Patents), requested the Court of Justice of the European Union (CJEU) to further clarify its previous interpretation of the term "human embryo", given in landmark decision C-34/10 (Oliver Brüstle v Greenpeace e.V.; handed down on October 18, 2011) (cf. Newsletter issue of May 2011).

The new referral concerns two UK patent applications, both relating to methods of obtaining human embryonic stem cells derived from oocytes that were stimulated by parthenogenesis, that is, by activation of an oocyte in the absence of sperm. In contrast to a fertilized embryo, the cells of such activated oocyte (i.e., a parthenote) are pluripotent but not totipotent (i.e., can develop into embryonic but not extra-embryonic tissue). In other words, this parthenogenetic approach of obtaining embryonic stem cells does not involve the destruction of fertilized embryos. However, both patent applications were considered to contain subject matter being excluded from patentability (i.e., the "use of human embryos for industrial or commercial purposes") in view of the guidelines laid down in decision C-34/10.

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DEPOSIT OF BIOLOGICAL MATERIAL – IMPACT ON VALIDITY OF PRIORITY CLAIM

In decision T107/09, the competent EPO Technical Board of Appeal 3.3.04 provided important guidance with respect to the timely deposit of biological material in order to fulfill the "same invention" requirement when assessing the validity of a priority claim.

The case concerned European patent 0 555 880 B1 relating to ligands for the CD40CR receptor. Claim 1 as granted reads:

  • A soluble ligand which comprises at least a binding portion of an immunoglobulin molecule, in which the immunoglobulin molecule is capable of competitively inhibiting the binding of monoclonal antibody MR1 as produced by a hybridoma cell line deposited with the ATCC and assigned accession number HB 11048, to CD40CR molecule […].

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SUPPLEMENTARY PROTECTION CERTIFICATES – NEW REFERRALS TO THE CJEU

Even though the Court of Justice of the European Union (CJEU) has handed down in the last two years a considerable number of landmark decisions concerning various aspects of Regulation 469/2009/EC (i.e. the SPC regulation), the rulings have apparently still left numerous issues of the legislation unresolved. Courts in Great Britain, Germany, and the Netherlands have now referred numerous further questions to the CJEU, which might be wondering whether there is some pan-European conspiracy to deluge it with SPC-related references. Two interesting referrals will be illustrated below.

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ADMISSIBILITY OF DISCLAIMERS – NEW LESSIONS FROM THE EPO TECHNICAL BOARDS OF APPEAL

Last year, the EPO Enlarged Board of Appeal (EBA) handed down its decision in case G2/10 relating to the admissibility of disclaimers whose subject matter was disclosed as an embodiment (i.e. 'positively disclosed' disclaimers) in the application as originally filed (cf. Newsletter issue of September 2011).

The EBA ruled that an amendment to a claim by the introduction of a disclaimer disclaiming from it subject matter disclosed in the application as filed infringes Article 123(2) EPC if the subject matter remaining in the claim after the introduction of the disclaimer is not, be it explicitly or implicitly, directly and unambiguously disclosed in the application as originally filed.

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PATENTABILITY OF SURGICAL METHODS – NEW INSIGHTS FROM THE EPO

In its previous decision G1/07, the EPO Enlarged Board of Appeal (EBA) shed new light on the patentability of surgical methods, particularly those forming part of diagnostic methods. Based on this ruling the range of patentable subject matter is now limited in that methods that are surgical by nature but not necessarily by purpose are not deemed eligible for patent protection according to Article 53(c) EPC (cf. Newsletter issue of April 2010).

However, after issuance of G1/07 numerous complaints have been raised that the EBA refrained from providing any workable criteria for determining whether such surgical intervention is excluded from patent protection, that is, when an invasive step constitutes a substantial physical intervention on the body that requires professional medical skills and involves a substantial health risk.

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