Thanks to Edward Tomlinson (Frohwitter) for pointing out to the IPKat a new referral that has recently been made to the EPO enlarged board, in decision T 1319/04. The questions being asked are as follows:
" 1. Where it is already known to use a particular medicament to treat a particular illness, can this known medicament be patented under the provisions of Articles 53(c) and 54(5) EPC 2000 for use in a different, new and inventive treatment by therapy of the same illness ?
2. If the answer to question 1 is yes, is such patenting also possible where the only novel feature of the treatment is a new and inventive dosage regime ?
3. Are any special considerations applicable when interpreting and applying Articles 53(c) and 54(5) EPC 2000 ?"
New EBA referral
![New EBA referral]()
Reviewed by David Pearce
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Friday, May 09, 2008
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This will hopefully resolve the uncertainty which has existed since the earlier decision T1020/03. This earlier decision found that elements of a dosage regimen could render a medicinal indication claim novel, while at the same time not being excluded under the then valid Art.52(4) EPC (now Art.53(c) EPC).
ReplyDeleteThis was a surprising finding in T1020/03. If the dosage features contribute to the scope of the claim, thus rendering it novel, then the claim incorporates features relating to a method of treatment and is consquently excluded from patentability by Art.53(c) EPC. Conversely, if the dosage features do not contribute to the scope of the claim, such that it is not excluded from patentability by Art.53(c) EPC, then they do not limit the claim, which then lacks novelty. The classic catch 22 - deliberately designed that way to limit the possibilies of patenting medicinal uses of compounds to inventions characterised by either the compounds used or the diseases treated (Art.54(2),(4),(5) EPC) and not by features relating to the medical treatment of a patient, which Art.53(c) EPC is designed to prevent.
Hi,
ReplyDeleteThere is in fact a second EBA referral in the latest batch of Board of Appeal updates: T1242/06.
The following questions are referred to the Enlarged Board of Appeal for decision:
1. Does a non-microbiological process for the production of plants consisting of steps of crossing and selecting plants fall under the exclusion of Article 53(b) EPC only if these steps reflect and correspond to phenomena which could occur in nature without human intervention?
2. If question 1 is answered in the negative, does a non-microbiological process for the production of plants consisting of steps of crossing and selecting plants escape the exclusion of Article 53(b) EPC merely because it contains, as part of any of the steps of crossing and selection, an additional feature of a technical nature?
3. If question 2 is answered in the negative, what are the relevant criteria for distinguishing non-microbiological plant production processes excluded from patent protection under Article 53(b) EPC from non-excluded ones? In particular, is it relevant where the essence of the claimed invention lies and/or whether the additional feature of a technical nature contributes something to the claimed invention beyond a trivial level?
Ed Farrington, www.Valea.se