G 2/06: No EP patents for human embryo stem cells

Rule 28(c) EPC states, "under Article 53(a), European patents shall not be granted in respect of biotechnological inventions which, in particular, concern [...] uses of human embryos for industrial or commercial purposes".  

The EPO Enlarged Board of Appeal has now decided (in G 2/06) that this forbids patenting of claims directed to products which, at the filing date, could only be prepared by a method that necessarily involved destruction of human embryos from which the products were derived, even if this method was not part of the claims.  It was not relevant whether, after the filing date, the same products could be obtained by other means that did not involve the destruction of human embryos.  

The Board also decided that it did not matter whether the patent application was made before the entry into force of Rule 28 (previously Rule 23d EPC 1973), because there were no transitional arrangements made when the rule was introduced, following the EC Biotechnology Directive. 

As announced by the EPO, this decision means that the patent applicant, the Wisconsin Alumni Research Foundation (WARF), will not be able to obtain European patent protection for their invention (dating back to 1998) relating to a process for obtaining stem cells from human embryos. 

EPO hears WARF arguments

Yesterday the European Patent Office (EPO) heard oral submissions on the application of Wisconsin Alumni Research Foundation (WARF) for a European patent that relates to human embryonic stem cells. All in all, some 126 submissions were received from interested parties, including the United Kingdom Intellectual Patent Office (UK-IPO) -- which observes that there is no consensus within European Patent Convention Contracting States concerning the public policy issues which WARF’s application raises.

The IPKat has received a press statement from Scotland-based IP practice Shepherd and Wedderburn, which endorses the UK-IPO’s position that it is for Contracting States and not the EPO to determine acts which they consider to be immoral. Says the statement:

"The issues raised by bioscience are within the margin of appreciation of Contracting States. It is unfair to WARF that the moral acceptability of its purported innovation will be decided upon by the EPO, based on its perception of what may be acceptable across the breadth of Contracting States".

The firm predicts that the EPO is likely to move cautiously [the IPKat says, that's no surprise if you consider its movements over the past 30 years], concerned not to be seen as pushing potentially unwanted technical innovation on to the more conservative Contracting States. This caution, concerning issues of public policy which ought rightly to be decided at Contracting State level, may have unintended consequences. The firm's conclusion is that the imposition of moral criteria upon patent application decisions in the stem cells field may well drive investment from Europe to jurisdictions where patent criteria will be decided upon solely on the basis of merit [the IPKat has never understood why this should make any difference: wherever the R&D cash is spent, the results will be either patentable or non-patentable in the same markets -- and even the absence of patent protection has never stopped people commercialising their products if they see a profit ahead. Can someone assist him?].

The IPKat awaits further developments with bated breath.