The EPO’s Technical Board of Appeal (TBoA) issued a decision last month dismissing an appeal filed on behalf of Technion Research and Development Foundation, Ltd. against a decision of the Examining Division refusing application 03751238.1. The decision is available here.
In this case, it was concluded that the claimed invention depended upon the use of HES cells which were either obtained by de novo destruction of human embryos or by using established HES cell lines which were initially obtained by methods involving the destruction of human embryos, both of which are excluded from patentability under the provisions of Article 53(a) EPC in combination with Rule 28(c) EPC.
In light of decision G2/06 of the Enlarged Board of Appeal, the TBoA confirmed that “the technical teaching of the application has to be looked at as a whole and not just the explicit wording of the claims, which themselves do not explicitly specify a step of obtaining HES cells by the use, involving their destruction, of human embryos.”.
The TBoA confirmed that “all steps preceding the claimed use of HES cells which are a necessary precondition for carrying out the claimed invention, have to be considered.”.
It was also interesting to see that the TBoA stated that judgments of the ECJ whilst not legally binding on the EPO or its boards of appeal, should be considered as being persuasive. In this regard, the TBoA was referring to the ECJ’s Brüstle decision.
Practical considerations
- The majority of applications filed in this area today are likely to avoid the problems encountered here because cell lines are available which have been created without having to destroy human embryos.
- We are likely to see more decisions of this kind as the EPO works through the appeals based on applications that pre-date the availability of cell lines as outlined in point 1 above.
http://www.aipla.org/committees/committee_pages/Biotechnology/international/Shared%20Documents/International_Buzz_201403c.pdf