A1 Patentability at the European Patent Office: Avoiding the Therapy Trap
Track: IP Trends and Successful Practices
Target Audience: Intermediate
Sebastian Tegethoff, 24IP Law Group
Robert Alderson, Jr., Jacobacci & Partners S.p.A.
Catherine B. Martineau, Esp., J.D., MacMillan Sobanski & Todd, LLC
Maura O’Connell, Ph.D., FRKelly
An application that is intended to enter into the regional phase at the European Patent Office (EPO) from a Patent Cooperation Treaty (PCT) filing might require amendment of the claims to current practice before the EPO. Claims directed to a method for the treatment of the human or animal body by surgery, therapy or diagnostic methods are eligible in the U.S., but Article 53 c) of the European Patent Convention (EPC) states that patents shall not be granted for methods for the treatment of the human or animal body by surgery or therapy, and diagnostic methods practiced on the human or animal body shall not be regarded as inventions which are susceptible of industrial application. At the same time, it is possible to obtain protection for products, in particular substances, or compositions for use in methods for the treatment of the human or animal body by surgery, therapy or diagnostic methods. This workshop aims at explaining and preparing exemplary allowable claims under the EPC regarding therapy and diagnostics. A checklist will be provided, taking the latest EPO case law into consideration. Finally, the differentiation between claims that are allowable, because they are directed to products, or pharmaceutical compositions for the U.S. in therapy or diagnostics, from claims violating the ban of therapy or diagnostic claims will be worked out. Avoid the therapy trap in Europe!
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