4.3. Surgical methods
4.3.1 One surgical step in a multi-step method
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In G 1/07 the Enlarged Board upheld the principle confirmed in opinion G 1/04 (OJ 2006, 334) and underlying the whole body of practice and jurisprudence hitherto (see e.g. T 820/92 (OJ 1995, 113)), that a method claim falls under the prohibition on patenting methods for treatment by therapy or surgery now under Art. 53(c) EPC if it comprises or encompasses at least one feature defining a physical activity or action that constitutes a method step for treatment of a human or animal body by surgery or therapy. The principle is not only formally justified by the fact that the exclusion under Art. 53(c) EPC does not contain any limitation as to the defined methods being excluded only when claimed as such. More importantly, it is also justified as to substance, i.e. it enables the legislative purpose served by the exclusion to be achieved (see in this chapter I.B.4.1.).
- Case law 2020
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T 1631/17 concerned a method for producing tooth replacement parts. The appellant (patent proprietor) had appealed against the opposition division's decision to revoke the patent. It was undisputed that the wording of claim 1 did not contain any explicit method step that could be deemed surgical within the meaning of Art. 53(c) EPC. However, the claimed method did encompass a step of this kind, and this was sufficient for the patent to fall under the exception stipulated in Art. 53(c) EPC (G 1/07, OJ 2011, 134). As per the description, the method according to the invention began by a first impression being taken from a dentition in which the missing tooth substance had first been temporarily replaced. Only after this impression of the "complete" dentition had been taken were the teeth prepared for the second impression. The dentures were then produced using the two impressions. It followed that replacing the missing tooth substance was an essential feature of the invention. This was particularly true in this case since it was this exact step that made the contribution over the prior art. This method step thus had to be read into the claim when interpreting it. The preparation of the teeth – a step performed after the first impression – therefore also fell within the claimed method, in terms of both when and where it was done. To carry out the claimed method, it was essential to immediately perform the intermediate step of preparing the teeth, otherwise it would not be possible to take the second impression. By definition, the teeth preparation was performed directly on the patient, and since this involved invasively extracting a significant amount of body tissue, it was a surgical method step.