G 0001/07 (Treatment by surgery/MEDI-PHYSICS) of 15.02.2010
- European Case Law Identifier
- ECLI:EP:BA:2010:G000107.20100215
- Date of decision
- 15 February 2010
- Case number
- G 0001/07
- Petition for review of
- T 0992/03 2006-10-20
- Application number
- 99918429.4
- IPC class
- G01R 33/28
- Language of proceedings
- English
- Distribution
- Published in the EPO's Official Journal (A)
- Download
- Decision in English
- Other decisions for this case
- -
- Abstracts for this decision
- -
- Application title
- MR methods for imaging pulmonary and cardiac vasculature and evaluating blood flow using dissolved polarized **(129)Xe
- Applicant name
- Medi-Physics, Inc.
- Opponent name
- -
- Board
- -
- Headnote
The questions referred to the Enlarged Board of Appeal are answered 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 disclaimer 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 considered 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.
- Relevant legal provisions
- Act revising the Convention on the Grant of European Patents Art 3(1)Act revising the Convention on the Grant of European Patents Art 7(1)Agreement on Trade-Related Aspects of Intellectual Property Rights Art 27(3)(a)European Patent Convention Art 112(1) 1973European Patent Convention Art 123(2)European Patent Convention Art 123(3)European Patent Convention Art 177(1) 1973European Patent Convention Art 4(3)European Patent Convention Art 52 1973European Patent Convention Art 52(2) 1973European Patent Convention Art 52(3) 1973European Patent Convention Art 52(4) 1973European Patent Convention Art 53 1973European Patent Convention Art 53(b)European Patent Convention Art 53(b) 1973European Patent Convention Art 53(c)European Patent Convention Art 54 1973European Patent Convention Art 55 1973European Patent Convention Art 56European Patent Convention Art 56 1973European Patent Convention Art 57 1973European Patent Convention Art 83European Patent Convention Art 84European Patent Convention Art 84 1973European Patent Convention R 43European Union: Directive 98/44/EC of the European Parliament and the Council of 6 July 1998 on the legal protection of biotechnological inventions Art 6(2), Recital 35German PatG § 5(2)Patent Cooperation Treaty R 39(1)Patent Cooperation Treaty R 67(1)Swiss PatG Art 2(2)Transitional Provisions: Decision_AC of 28 June 2001 on the transitional provisions under_Art_7of the Act revising the EPC_Art_001UK Patents Act 1977 Section 4(2)Vienna Convention on the Law of Treaties (1969) Art 31Vienna Convention on the Law of Treaties (1969) Art 32
- Keywords
- Applicable provisions - Art. 112(1) EPC 1973 - Art. 53(c) EPC"
Admissibility of the referral - yes
The Vienna Convention - principle of narrow interpretation of exclusions - no
One surgical step in a multi-step method - excluded from patentability - yes
Limited to surgery for a therapeutic purpose - no
Meaning of the wording of the exclusion - legal history - impact of jurisprudence and practice - ratio legis
Nature of interventions - involvement of a practitioner - no" "Medical skills and health risks - further criteria
Claim left to encompass a surgical step - no
Disclaimer under Article 53(c) EPC - yes - subject to remaining requirements of EPC
Omission - methods only concerning the internal operation of a device - yes - subject to remaining requirements of the EPC
Possible use of non-surgical method in a surgical method - irrelevant, if non-surgical method complete teaching in itself - Catchword
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- Cited cases
- G 0005/83G 0001/98G 0001/03G 0002/03G 0001/04G 0002/06J 0010/07T 0004/80T 0144/83T 0245/87T 0182/90T 0820/92T 0082/93T 0329/94T 0789/96T 1054/96T 0035/99T 1102/02T 0383/03T 1172/03T 0005/04T 0009/04T 0924/05T 0542/06T 0810/06T 1107/06
- Citing cases
- G 0002/08G 0003/08G 0001/09G 0001/10G 0002/10G 0002/12G 0002/13G 0001/16J 0007/11T 0663/02T 0992/03T 1262/04T 0826/06T 1075/06T 1242/06T 0266/07T 1068/07T 1695/07T 0818/08T 0836/08T 0923/08T 1653/08T 1680/08T 1798/08T 1487/09T 1599/09T 1635/09T 2052/09T 1016/10T 1213/10T 2187/10T 2369/10T 2426/10T 1592/11T 2438/11T 0044/12T 0429/12T 0475/12T 0699/12T 1731/12T 2102/12T 0651/13T 1140/14T 0141/15T 0235/15T 0434/15T 0598/15T 0944/15T 1758/15T 1549/16T 1927/16T 0208/17T 1631/17T 2699/17T 0467/18T 1916/19T 2136/19T 2612/19T 3124/19T 0621/20T 0318/21T 0815/22T 1259/22T 1553/22
ORDER
For these reasons it is decided that:
The questions referred to the Enlarged Board of Appeal are answered 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 disclaimer 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 considered 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.