T 1374/04 (Stem cells/WARF) vom 07.04.2006

ORDER

For these reasons it is decided that:

The following questions are referred to the Enlarged Board of Appeal for decision:

1. Does Rule 23d(c) EPC apply to an application filed before the entry into force of the rule?

2. If the answer to question 1 is yes, does Rule 23d(c) EPC forbid the patenting of claims directed to products (here: human embryonic stem cell cultures) which - as described in the application - at the filing date could be prepared exclusively by a method which necessarily involved the destruction of the human embryos from which the said products are derived, if the said method is not part of the claims?

3. If the answer to question 1 or 2 is no, does Article 53(a) EPC forbid patenting such claims?

4. In the context of questions 2 and 3, is it of relevance that after the filing date the same products could be obtained without having to recur to a method necessarily involving the destruction of human embryos (here: eg derivation from available human embryonic cell lines)?

Annex 1

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List of the documents in the present appeal proceedings

(D1) Ariff Bongso et al., Human Reproduction, Vol. 9, No. 11, 1994, Pages 2110 to 2117

(D2) Benjamin E. Reubinoff et al., Nature Biotechnology, Vol. 18, April 2000, Pages 399 to 404

(D3) Printout retrieved on 13 May 2005 from the internet site: http://escr.nih.gov/

(D4) Common Position (EC) Nº 19/98, Official Journal of the European Communities, 8 April 1998, Pages C110/17 to C110/34

(D5) Directive 98/44/EC of the European Parliament and of the Council, Official Journal of the European Communities, 30 July 1998, Pages L213/13 to L213/21

(D6) Statement by the European Patent Office concerning the resolution of the European Parliament of 4 October 2001 on the patenting of BRCA1 and BRCA2 ("breast cancer") genes, document CA/145/01 e, 17 October 2001

(D7) Decision T 356/93, OJ EPO, 1995, 545

(D8) Decision G 1/98, OJ EPO, 2000, 111

(D9) Interlocutory decision of the opposition division dated 21 July 2003 concerning European patent 0 695 351

(D10) Interlocutory decision of the opposition division dated 16 January 2003 concerning European patent 0 169 672

(D11) Document of uncertain origin dated September 2002 with the title "Stem Cells: A Primer / National Institutes of Health"

(D12) Undated document of uncertain origin entitled "Executive summary"

(D13) Printout retrieved on 4 November 2003 from the internet site: http://europa.eu.int/comm/research/quality-of-life/stemcells/about.html

(D14) Opinion No. 15 of the European Group on Ethics in Science and New Technologies to the European Commission, 14 November 2000, Pages 1 to 20

(D15) James A. Thomson et al., Proc. Natl. Acad. Sci. USA, Vol. 92, August 1995, Pages 7844 to 7848

(D16) James A. Thomson et al., Science, Vol. 282, 6 November 1998, Pages 1145 to 1147

(D17) Lori P. Knowles, Nature Biotechnology, Vol. 22, No. 2, February 2004, Pages 157 to 163

(D18) Report from the Commission to the European Parliament and the Council, document COM(2002) 545 final, 7 October 2002

(D19) Proposal for a European Parliament and Council Directive on the legal protection of biotechnical inventions, document 96/C 296/03, COM(95) 661 final - 95/0350(COD), Official Journal of the European Communities, 8 November 1996, Pages C 296/4 to C 296/10

(D20) Opinion of the Economic and Social Committee on the 'Proposal for a European Parliament and Council Directive on the legal protection of biotechnological inventions', document 96/C 295/03, Official Journal of the European Communities, 7 October 1996, Pages C 295/11 to C 295/17

(D21) Report by the Committee on Legal Affairs and Citizen's Rights on the proposal for a European Parliament and Council Directive on the legal protection of biotechnological inventions, document DOC_EN\RR\330\330382, 25 June 1997, Pages 1 to 73

(D22) Interlocutory decision of the opposition division dated 16 August 2001 concerning European patent 0 322 240/88312222.8, as published in E.P.O.R., Issue 1, Sweet & Maxwell Limited, Pages 16 to 23

(D23) Printout dated 26 April 2004 retrieved from the internet site http://www.eel.nl/cases/HvJEG/698j0377ag.htm, concerning the opinion of Advocate General Jacobs delivered on 14 June 2001, Pages 1 to 37

(D24) Judgment of the European Court in Case C-377/98 on 9 October 2001, Pages 1 to 12

(D25) Survey on opinions from National Ethics Committees or similar bodies, public debate and national legislation in relation to human embryonic stem cell research and use, Vol. I, Edited by Line Matthiessen-Guyader, July 2004, Pages 1 to 87

(D26) Opinion No. 8 of the group of advisers on the ethical implications of biotechnology to the European Commission, 25 September 1996

(D27) Decision T 320/87, OJ EPO 1990, 71

(D28) Decision T 19/90, OJ EPO 1990, 476

(D29) Opinion No. 9 of the group of advisers on the ethical implications of biotechnology to the European Commission, 28 May 1997