European Patent Office

G 0001/07 (Treatment by surgery/MEDI-PHYSICS) vom 15.02.2010

Europäischer Rechtsprechungsidentifikator
ECLI:EP:BA:2010:G000107.20100215
Datum der Entscheidung
15. Februar 2010
Aktenzeichen
G 0001/07
Antrag auf Überprüfung von
T 0992/03 2006-10-20
Anmeldenummer
99918429.4
IPC-Klasse
G01R 33/28
Verfahrenssprache
Englisch
Verteilung
Im Amtsblatt des EPA veröffentlicht (A)
Amtsblattfassungen
Weitere Entscheidungen für diese Akte
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Zusammenfassungen für diese Entscheidung
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Bezeichnung der Anmeldung
MR methods for imaging pulmonary and cardiac vasculature and evaluating blood flow using dissolved polarized **(129)Xe
Name des Antragstellers
Medi-Physics, Inc.
Name des Einsprechenden
-
Kammer
-
Leitsatz

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.

Relevante Rechtsnormen
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
Schlagwörter
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
Orientierungssatz
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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.