Technical Board of Appeal maintains two “Myriad/breast cancer” patents in limited form

19 novembre 2008

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A technical board of appeal of the European Patent Office has decided that the patent EP 699754, relating to a "Method for diagnosing a predisposition for breast and ovarian cancer", is to be maintained in an amended form. This decision sets aside the EPO's first instance decision of May 2004 to revoke the patent. This decision is the most recent one in a series of appeal proceedings relating to the human breast cancer gene BRCA1.

A week earlier the Board furthermore decided to maintain in amended form European patent EP 705903, "Mutations in the 17q-linked breast and ovarian cancer susceptibility gene", granted in May 2001 and considerably limited in 2005 after first instance opposition proceedings. About a year ago the Board had already decided that the patent EP705902, relating to the BRCA1 gene itself, was to be maintained in a severely limited form only.    

The application, resulting in the patent EP 699754, proceeded to grant in early 2001. In October 2001, oppositions were filed by a number of parties including several French research institutes and various national centres for human genetics. The opponents argued that the patent did not comply with the requirements of the European Patent Convention (EPC) and should therefore be revoked. The Opposition Division decided in favour of the opponents and revoked the patent.

This decision was appealed by the patent proprietor, who requested that the patent be maintained in a form restricting the original patent claims.

The Technical Board of Appeal, a second-instance judiciary body of the EPO in this case consisting of three technical members and two legal members, has set aside the first-instance decision and maintained the patent, albeit in an amended form. The patent now relates to diagnostic methods for the detection of a predisposition for breast and ovarian cancer caused by a specific group of mutations of the gene, so-called frame shift mutations. It does not contain claims directed to the BRCA1 gene itself or to mutated forms thereof. The patent cannot be further contested at European level.

The full reasons for the decision will be set out in writing and published as soon as possible; they will also be made available online and will then be open to consultation on the Online Services Website as part of the EPO's public file inspection service.

Further information on EP 66754

• esp@cenet:
  European patent No. 699 754
• Press release of 12.5.2004:
  Public opposition hearing on "Myriad/Breast cancer" patent at the European Patent Office (17-19 May)
• Press release of 18.5.2004:
  “Myriad/breast cancer” patent revoked after public hearing 
• Press release of 17.11.2008:
  Technical Board of Appeal maintains further European patent relating to breast and ovarian cancer susceptibility gene in amended form

Further information on EP 705902/03

• Press release of 17.1.2005:
  Public opposition hearings on two genetic engineering patents ("breast cancer gene") at the European Patent Office
  
• Press release of 21.1.2005:
  Patent on breast and ovarian cancer susceptibility gene amended after public hearing
  
• Press release of 27.9.2007:
  Board of Appeal confirms amended patent on breast and ovarian cancer susceptibility gene after public hearing
  

Further information on EP 705903

• Press release of 25.1.2005: European patent on mutations in breast and ovarian cancer susceptibility gene amended after public hearing
• Press release of 27.9.2007: 
  Board of Appeal confirms amended patent on breast and ovarian cancer susceptibility gene after public hearing
• Press release of 14.11.2008:
  Technical Board of Appeal maintains European patent on mutation in breast and ovarian cancer susceptibility gene
  

Further information on BRCA2

• Press release of 28.6.2005:
  Public oral proceedings on the "Breast Cancer Gene 2" patent at the European Patent Office
  
• Press release of 29.6.2005:
  Patent on "Breast Cancer Gene 2" patent maintained in amended form after public hearing