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NEWS - JUNE 2007EPO: The Enlarged Board of Appeal of the European Patent Office has been asked to provide clarification as to whether or not a diagnostic method that includes a step which involves a physical intervention practised on the human or animal body is barred from patent protection by Article 52(4) EPC. The referral comes from the interlocutory decision on case T 0992/03, in which the Technical Board of Appeal had to consider the refusal by the Examining Division of a claim to magnetic resonance methods for imaging pulmonary and cardiac vasculature and evaluating blood – which method included a step of administering polarised 129Xe as an imaging agent to a subject by injection. Under recent case law the exclusion under Art 52(4) of diagnostic methods per se has generally been construed narrowly. Here the Technical Board of Appeal considered that the claimed methods led to the acquisition of data (in the form of an image or a spectroscopic signal), but did not encompass the steps of comparing data with standard values, finding any significant variation and attributing such deviation to a clinical picture; which steps are considered constitutive for making a diagnosis. Accordingly, in line with Enlarged Board of Appeal Decision G1/04, the claims were here not excluded on grounds that they were diagnostic methods. However, the Technical Board of Appeal considered that the case law provided inconsistent approaches with respect to a method involving a physical intervention on a subject such as an injection. It was considered on the one hand that certain cases, and also the EPO Guidelines for examination, emphasis the nature of the physical intervention as being the key consideration. The result of this approach being that any intervention requiring the use of surgical instruments would likely be objectionable as a method of surgery. Whereas on the other hand certain cases, including the opinion expressed by the Enlarged Board of Appeal in G 1/04, required analysis of the purpose of the intervention; viewing only those physical interventions that aimed at maintaining or restoring health of the patient to be objectionable. The Technical Board of Appeal took the view that these approaches may give rise to opposing judgments for one and the same physical intervention, arguing that an injection of a medicament for the treatment of a disease would be excluded from protection but an injection of a substance for reducing wrinkles for cosmetic purposes might not be excluded as it was not suitable for maintaining or restoring health. The Technical Board of Appeal in case T 0992/03 has referred questions to the Enlarged Board of Appeal as to: The case is pending under G 1/07 and the EPO has invited third parties to file any statements concerning the referred questions by the end of October 2007. For further information see: EPO: Accordingly, for patent applicants seeking to protect their inventions in Europe it will no longer be necessary after 1 January 2008 to file separate Norwegian and European patent applications, as it will be possible to obtain protection in Norway via the filing of a single European patent application http://www.epo.org/focus/news/2007/070613.html EPO: Accordingly, for European patents applications filed from 01 July 2007, including PCT-EP regional phase applications, the EPO will automatically obtain and include in the application file, at no cost to the applicant, a copy of any priority documents first filed at the USPTO, KIPO, JPO or EPO. Only in the case that an electronic copy of the priority document cannot be obtained in time, will the EPO request that the applicant provides a certified copy. For further information see: |