The Enlarged Board of Appeal (EBoA) of the EPO has made a ruling in an appeal connected to the so-called WARF/Thomson stem cell application.
The ruling contains clarifications to questions posed by a Technical Board of Appeal dealing with the patentability of the WARF application. This application describes a method for obtaining embryonic stem cell cultures from primates, including humans, and was filed by the Wisconsin Alumni Research Foundation (WARF) in 1995.
Here is the statement from Wisconsin Alumni Research Foundation:
The Wisconsin Alumni Research Foundation (WARF) is disappointed in the decision of the Enlarged Board of Appeal of the European Patent Office (EPO) rejecting the claims of WARF’s European Patent Application No. 96903521.1 [...] WARF currently is considering various options in response to this decision.
WARF emphasizes that this ruling by the EPO Enlarged Board of Appeal was based on European Union patent rules that are peculiar to Europe. There is no counterpart in United States patent law and therefore the EPO decision does not in any way affect WARF’s patent rights in the United States.
“We have more than 40 issued patents directed to stem cells in 12 countries with more than 200 cases pending all over the world,” states WARF General Counsel Michael Falk. “This decision represents a ruling in just one of these cases and in just one jurisdiction on grounds that do not apply in other jurisdictions.”
The opinion of the Enlarged Board of Appeal focused on the issue of the patentability of cells made using an embryo. The Board made no determination of the patentability of claims based on any of the traditional criteria used to assess patentability – usefulness, novelty and non-obviousness. In fact, the opinion makes clear that its decision does not address the question of patentability in general of inventions relating to human stem cell cultures.
The EPC does not allow patenting inventions whose commercial exploitation would be contrary to public order (”ordre public“) or morality. Furthermore, the Convention prohibits patenting on uses of human embryos for industrial or commercial purposes.
The EBoA is responsible for ensuring uniform application of patent law. Like all other appeal boards, it is independent from the Office in its decisions and bound only by the EPC. Its rulings are legally binding for all instances at the EPO, including the Technical Board of Appeal competent in the WARF case.
