Surgical steps in European patent claims


Marianne Holme

According to the European Patent Convention, patents shall not be granted in respect of methods for treatment of the human or animal body by surgery or therapy, or practised diagnostic methods.

Many applicants attempting to claim new surgical devices avoid including surgical steps in claims to evade Art 53(c) EPC. Nevertheless a surgical device often needs to be described in relation to the human body, its use and by means of functional terms. Case law on this topic is extensive but still developing, because applicants continue to relate to and, if appropriate, work around it.

In case G1/04, surgery in a diagnostic method included any physical intervention in which maintaining the life, or health, of a subject was of paramount importance.

This decision was followed by case G1/07, which indicated that the exclusion from patentability should apply only to methods in respect of which it is justified on grounds of public health, the protection of patients and the freedom of the medical profession to apply the treatment of choice to its patients. G1/07 states that “any definition of the term treatment by surgery must cover the kind of interventions which represent the core of the medical profession’s activities”.

EPC, healthcare, diagnostic methods