IPO finds cosmetic treatment patentable

There are a number of things that are not in themselves patentable under UK law, according to the Patents Act 1977.  As well as the well-known exceptions to patentability under section 1(2) such as computer programs and business methods, a separate category of inventions are specifically excluded from being patented under section 4A, which states:

"(1) A patent shall not be granted for the invention of—
      (a) a method of treatment of the human or animal body by surgery or therapy, or
      (b) a method of diagnosis practised on the human or animal body."

The reasoning behind these specific exclusions is generally assumed to be that doctors and surgeons should not be prevented from carrying out their normal work by the threat of infringing a patent.  A corresponding provision can also be found in Article 53(c) of the European Patent Convention, which states that European patents shall not be granted in respect of:

"(c) methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body; this provision shall not apply to products, in particular substances or compositions, for use in any of these methods."

Decisions on where the boundary of what is and is not patentable do not come up very often, so the IPKat read a recent decision, BL O/058/10, from the UK IPO with some interest.  This decision related to a GB patent application (published as GB2415387A) made by Virulite Distribution Limited, claiming a method of cosmetically treating skin using light of a very specific wavelength.  The company had been previously granted a patent for "an electromagnetic radiation phototherapy system" (GB2344532B), which was directed at treating cold sores using the same wavelength.  What was new in their more recent application was therefore only the use of this system in treating wrinkles instead of cold sores. The UK IPO examiner objected to the claimed invention as being excluded under section 4A for being a method of treatment by surgery or therapy as well as for lacking an inventive step over the cited prior art. The applicant then took the matter to a hearing.

The hearing officer referred to two EPO Technical Board of Appeal decisions, T 1172/03 (Thermage) and T 383/03 (General Hospital Corporation), relating to the corresponding EPC provision of Article 53(c) (ex Article 52(4) EPC1973).  In T 1172/03, the Board decided that "patentability of a surgical method claimed as a cosmetic method must be excluded, if the cosmetic use of the method is only expressed in the claim as a mere intention of the person using the method", and in T 383/03: "If a method involving a physical intervention on the human or animal body (treatment by surgery) is clearly neither suitable nor potentially suitable for maintaining or restoring the health, the physical integrity, or the physical well-being of the person or animal, then the method does not fall under the exclusion from patentability provided for in Article 52(4) EPC".  From these decisions, the hearing officer decided that this indicated a two step approach to be taken in determining whether the invention was patentable.  The first step was to determine whether there was a significant intentional physical intervention, and the second step was to determine (if the answer to the first step was yes) whether such a treatment would be suitable for restoring health.

Following the EPO decisions, the hearing officer in this case considered the claimed method was not treatment by surgery because the intervention did not burn the skin (as was the case in T 1172/03).  There was also no suggestion that cells in the body were radically altered in the process (as was the case in T 383/03). The method was also not treatment by therapy, because (according to an expert medical witness) there were apparently no medical conditions that would benefit from wrinkle reduction resulting from the method. On the matter of inventive step, the hearing officer considered that GB2344532 did not contain clear and unmistakable directions to use the known process for reducing wrinkles, and that the use of the process to reduce wrinkles would be counter-intuitive (akin, so the hearing officer considered, to prescribing cigarettes for treatment of lung cancer), so the claimed invention would not be obvious to the skilled person. The objections raised could not therefore be sustained, and the application was remitted back to the examiner to conclude examination.

The IPKat can see that this lies at the very edge of where the section 4A exclusions apply, but is not entirely sure that the right decision has been made.  Remote thought the possibility may seem, what if the claimed treatment for reducing wrinkles actually does turn out to have therapeutic benefits for some disease? Would this make the patent invalid in retrospect?