Patenting a method of treatment by surgery: the EPO rules

The IPKat is excited to report that the decision of the Enlarged Board of Appeal of the European Patent Office in Case G 1/07 (MR methods for imaging pulmonary and cardiac vasculature and evaluating blood flow using dissolved polarized Xe) has now been published on the EPO's website. You can read the decision in full here. Frustratingly for those who like to cut and paste, this decision, which is 76 pages in length, has been uploaded as a slightly off-centre pdf and the text can't conveniently be cut-and-pasted.

For the record, the Enlarged Board has ruled as follows:

"1. A claimed imaging method in which, when carried out, maintaining the life and health of the subject is important and which comprises or encompasses an invasive step representing a substantial physical intervention on the body which requires professional medical expertise to be carried out and which entails a substantial health risk even when carried out with the required professional care and expertise, is excluded from patentability as a method for treatment of the human or animal body by surgery pursuant to Article 53(c) EPC.

2a. A claim which comprises a step encompassing an embodiment which is a "method for treatment of the human or animal body by surgery" within the meaning of Article 53(c) EPC cannot be left to encompass that embodiment.

2b. The exclusion from patentability under Article 53(c) EPC can be avoided by disclaiming the embodiment, it being understood that in order to be patentable the claim including the disclaimer must fulfil all the requirements of the EPC and, where applicable, the requirements for a dlsclaimer to be allowable as defined in decisions G 1/03 and G 2/03 of the Enlarged Board of Appeal.

2c. Whether or not the wording of the claim can be amended so as to omit the surgical step without offending against the EPC must be assessed on the basis of the overall circumstances of the individual case under consideration.

3. A claimed imaging method is not to be considerred as being a "treatment of the human or animal body by surgery" within the meaning of Article 53(c) EPC merely because during a surgical intervention the data obtained by the use of the method immediately allow a surgeon to decide on the course of action to be taken during a surgical intervention".
This is more or less what the IPKat had been expecting: a ruling which affirms the accepted practice on disclaimers and which limits itself closely to the characteristics of the invention the refusal to patent which was the subject of the appeal. He suspects though that his more knowledgeable readers will have a good deal more to say.
Patenting a method of treatment by surgery: the EPO rules Patenting a method of treatment by surgery: the EPO rules Reviewed by Jeremy on Tuesday, February 16, 2010 Rating: 5


  1. The third paragraph on page 59 is interesting in view of the EPO's current practice of refusing protection to method claims directed to the operation of a physical device wherein the method may have some resulting effect on the treatment of a patient even if this is not part of the claimed subject matter.


  2. Not only can it not be cut and pasted, it cannot be read by screen readers that blind people use.

  3. Am I alone in finding headnotes written by the EPO to be virtually impenetrable? The answer to question 1, for instance would be much clearer if it were writen in 2 or 3 sentences. It is as if the Board is trying to write a claim!

  4. The document is made from an image file and is much larger than the few hundred kB that one would expect from an 80-page decision. Those on the server are directly generated from the word processing format and so can be extracted as text.

    We are actually seeing a scan of a signed copy of the decision. The other version will come in its own good time.

    Kind regards,

    George Brock-Nannestad

  5. I live for the day when I can draft method claims that include the step of: 'exciting a predetermined region of the patient's body'....

  6. From page 30:
    "The question of which interpretation of the term "treatment by surgery" in Article now 53(3) EPC is the right one is undoubtedly an important point of law. It is therefore not necessary to decide whether the decisions referred to reveal a non-uniform application of the law within the meaning of Article 112(1) EPC 1973 or whether, all these decisions having been given by Board 3.2.02, albeit in different compositions, they rather reflect a change of mind having taken place in the jurisprudence of that Board."

    Although this is about the criterion "to ensure uniform application of the law" rather than the criterion "where two Boards of Appeal have given different decisions", this could be taken as a hint that some or all of the questions in G 3/08 will be declared inadmissible.

    What I also find interesting is the suggestion on page 29 that the AC has acted ultra vires in amending the English version of Art. 112 EPC.

  7. If you wish to cut and paste why not use acrobat or similar and convert the images using OCR? It can then be read by a screen reader.


  8. G4/08 has also now been published.$FILE/G4_08_fr.pdf

  9. Is it just me, or does the Enlarged Board's "new solution" to the interpretation of "methods of treatment by surgery" look very similar to the "fundamental, overriding test" for this exclusion in a decision of the IPO issued three days earlier (BL O/058/10 - paragraph 24)?
    Its good to see the IPO and EPO using the same approach - presumably independently.

  10. I also ask the same question of which interpretation of the term "treatment by surgery"? Will certainly visit your site more often now.



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