4.4.3 Avoiding the non‑patentability under Article 53(c) EPC of methods with therapeutic effect

One way of escaping the exception to patentability is a disclaimer, but the claim featuring the disclaimer must then meet all the EPC requirements (see also in this chapter I.B.4.3.5). In T 774/89 the board accepted the patentability of using a medication to increase milk production in cows, because it was evident that the success of the treatment did not depend on the animals' state of health, and the insertion in the claim of the term "non-therapeutic" served as a disclaimer, excluding the therapeutic effects of the medication.

According to T 1635/09 (OJ 2011, 542), the following applies to claims encompassing both therapeutic and non-therapeutic uses: a disclaimer "non-therapeutic" allows for the exclusion of therapeutic uses from a claim encompassing both therapeutic and non‑therapeutic uses in such a way that they are substantively separable, so that the remaining subject-matter is no longer covered by the exception to patentability under Art. 53(c) EPC. However, such a disclaimer cannot be employed to define as non‑therapeutic a use which – like that at issue in this case – necessarily includes one or more therapeutic steps, since the question whether or not a claimed use is therapeutic can be decided only in the light of the activities carried out, or the effects achieved, in the course of that use.

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