4.3.4 "Treatment by surgery" in the case law since G 1/07
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In T 1798/08, although all claims were directed to a visual prosthesis, i.e. an apparatus, they were objected to by the opponent under Art. 53(c) EPC as relating to a surgical method. The features "suitable to be located on the body of the user outside a wall of the sclera and attached to the sclera" and "suitable to be located implanted in the eye behind the iris", the opponent argued, related to a method for treatment of the human or animal body by surgery and thus transformed the claim into a "disguised" method claim, even though it was notionally directed to a device.
The board dismissed this objection. It observed that Art. 53(c), second sentence, EPC specified that the provision did not apply to products. The claim category "products" included apparatus. Accordingly, the provisions of Art. 53(c) EPC did not normally apply to apparatus claims. The fact that some features of the claimed apparatus were functionally defined in relation to the body of the patient did not, in itself, transform the apparatus claim into a method claim (T 712/93, T 1695/07; see also T 1407/08).
- T 1731/12
Eine Vorrichtung, die durch ein Merkmal definiert ist, das nur durch einen chirurgischen oder therapeutischen Schritt erzeugt werden kann, ist nach Artikel 53(c) EPÜ von der Patentierung ausgenommen (in Fortführung von T 775/97).
- Case law 2019
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In T 1731/12 the invention concerned a device for the desynchronisation of the activity of pathologically active brain areas comprising means for stimulating brain regions. Assessing whether the device was excluded from patentability under Art. 53(c) EPC, the board considered T 775/97. It had dealt with a claim for a new product made by a surgical step in the human body from two parts known individually. It had been decided there that a European patent could not be granted for a product defined by a construction that could be arrived at only by a surgical method step in a human or animal body. It was generally accepted, and explained for instance in the Enlarged Board decisions dealing with medical methods (most recently in G 1/07, OJ EPO 2011, 134), that a single surgical step was sufficient for a multi-step method to be considered unpatentable. In T 775/97 that approach had been applied to particular products. The board saw no reason to diverge from T 775/97. It agreed with the thinking that a product defined by a surgical step could not exist without it, and thus that the surgical step was part of the claimed product. Moreover, the exclusion of such a product from patentability was not contrary to the second clause of Art. 53(c) EPC, which provided that products for use in therapeutic or surgical methods were patentable. Otherwise medical and veterinary practitioners' freedom would be limited, as also discussed for example in G 1/07. The board saw a fundamental difference between the actions of "using" and "making" a product. Using patented subject-matter was generally allowed once that subject-matter had been duly purchased. To be allowed to make a patented product, by contrast, medical staff would need to purchase a licence for the process of making it; where that process involved a surgical or therapeutic method step, that would interfere precisely with the freedom of medical staff that the exclusion from patentability under Art. 53(c) EPC intended to protect. There had never been any divergence from the case law established in T 775/97. Decisions citing T 775/97 in this regard (T 1695/07, T 1798/08) had concluded that the devices claimed in those cases were not excluded from patentability under Art. 53(c) EPC precisely because they were not arrived at by surgical steps. A device defined by a feature that could be arrived at only by a surgical or therapeutic step was excluded from patentability under Art. 53(c) EPC (in line with T 775/97).