26 August 2022

T 2612/19: Essential (but unspecified) method steps must be considered when assessing Article 53(c) EPC

A recent decision by the Boards of Appeal at the European Patent Office (EPO) looks at the exceptions to patentability under Article 53(c) EPC, and how they apply to method claims which do not explicitly recite a treatment step.

Article 53(c) EPC excludes from patentability methods for the treatment of the human or animal body by surgery or therapy, as well as diagnostic methods practised on the body.

In the present case, the claims relate to a method of managing delivery of an orthodontic ‘treatment plan’, and recite steps performed before and after administration of orthodontic appliances to a patient (notably, the claims do not recite the administration step itself). During examination, the Examining Division refused the application under Article 53(c) EPC on the basis that the claims “implicitly comprise an orthodontic treatment step”.

During the appeal proceedings, the Applicant acknowledged that the unspecified administration step was a prerequisite for performing the method, but (citing G 1/07 and T 329/94) argued that the absence of an explicit administration step meant that the claims do not fall foul of Article 53(c) EPC.

The Board disagreed with the parallels drawn between the present invention and with G 1/07 and T 329/94. Whereas G 1/07 and T 329/94 dealt with cases in which there was no functional link between the claimed method and the effects produced by the device on the body, the presently claimed method steps were deemed to be functionally linked with (and incomplete without) the administration step.

The Board noted that “it is not necessary for a claim to explicitly (…) mention a therapeutic method step (…) to be excluded from patentability. It is sufficient that the claimed method encompasses such a step (see G 1/07, grounds 4.1 to 4.3…)” (see Reasons, 1.2). The unspecified administration step was therefore held to be an essential feature which must be taken into account when assessing Article 53(c) EPC.

The Board therefore agreed with the Examining Division and maintained the decision to refuse the application under Article 53(c) EPC.