Method of displaying image during surgery patentable, rules BGH

The German BGH overturned a decision by the Federal Patent Court (Bundespatentgericht) that refused to grant a patent for a method of combining images for use in heart surgery. In its decision of 31 August 2010 (the grounds just became available now), the BGH held that the method was not excluded from patentability under art. 2a(1)(2) German Patent Act (corresponding to art. 53(c) EPC 2000, which excludes methods for treatment of the human body by surgery from patentability).

The application, filed 17 December 2003 (DE 103 59 317) by Siemens claims a method to combine images to guide the surgeon during heart surgery. Basically - and this is a blog post, so excuse the simplification - the application claims the steps of creating a first image (3) using a non-invasive imaging method and locating, marking and highlighting the visible pathological areas (4), and then to combine this enhanced image with the live feed (8) of the imaging method used during surgery, this live feed showing the inside of the organ and the tip of the surgical instrument (catheter). The schematic drawing on the right shows a diagram of the invention (btw, you can click on it to enlarge if it is too small).

Both the Patent Office and the Federal Patent Court refused to grant the patent because it claimed a method for the surgical treatment of the human body.

The BGH disagrees. Pointing to Enlarged Board of Appeal decision G1/07, page 73, it explains that the mere fact that a method - such as an imaging method - may be used advantageously during surgery does not make it a surgical method (the IPKat's take on G1/07 can be found here). The BGH distinguishes the application in case from the application at issue in G1/07 on the grounds that the application at issue in G1/07 required the injection of a contrast agent into the heart, which was a surgical intervention, while here, the surgeon was not instructed at all on how to direct the catheter. While the claimed method presupposes the introduction of a catheter into the heart, it only claims the imaging method (para. 15 - the BGH notes that there is a close link between the surgical procedure and the imaging method, but nonetheless insists that the claims distinguish between the two).

The BGH goes on to note that the claimed method is also not a diagnostic method excluded from patentability as it only supports diagnosis, it does not inform the person skilled in the art on how to reach a diagnosis based on the images. The case is sent back to the Federal Patent Court to decide on inventive step.