[Ip-health] Germany: Stem cell patent partially revoked

[James Packard Love]

http://www.managingip.com/?Page=3D10&PUBID=3D34&ISS=3D23780&SID=3D684400&TY=
PE=3D20

May 2007
Germany: Stem cell patent partially revoked
Maiwald Patentanwalts GmbH, Munich

In a recent decision (3Ni-42/04) the German Federal Patent Court has
revoked the German patent DE 19756864 relating to neuronal precursor
cells derived from embryonic stem (ES) cells insofar as it concerns
cells that descend from ES cells prepared from human embryos.

The Court has based its decision on =A7 2(2) No 3 of the German Patent
Act (GPA), according to which patents shall not be granted in respect
of inventions concerning the use of human embryos for industrial or
commercial purposes. Remarkably, the claims of the disputed patent
are not directed to such a use. However, in the hearing, the Court
stated that, to obtain the ES cells, the destruction of human embryos
would be inevitable, and this would contravene the above regulation
as well.

The written decision is not yet available, but it will be of interest
to see how the Court will argue for its position. The amended patent
still encompasses cells derived from human ES cells which are not
prepared from human embryos but from different sources such as human
embryonic germ cells. Furthermore, it is also of note that the Court
has retroactively applied the exemption of =A7 2 GPA that only entered
into force in 2005, while the disputed patent was filed in 1997.

The decision will be open to an appeal to the German Federal Supreme
Court (BGH) and the patentee has already announced that he will take
legal action.

The Enlarged Board of Appeal of the European Patent Office is charged
with the same question that has now been answered in a national
German lawsuit.

In pending case G 2/06, a referral has been addressed to the Enlarged
Board asking whether "Rule 23d(c) EPC (the European correspondent to
=A7 2(2) No 3 GPA) forbids the patenting of claims directed to products
(here: human embryonic stem cell cultures) which =96 as described in
the application =96 at the filing date could be prepared exclusively by
a method which necessarily involved the destruction of the human
embryos from which said products are derived".

The Enlarged Board will have to clarify inter alia whether the
corresponding regulations of the EPC have to be interpreted narrowly
or not. In the case G 1/98, which concerned the scope of the
exclusion of plant varieties from patentability under Article 53(b)
EPC, the Enlarged Board arrived at a narrow construction by finding
that this article does allow claims covering plant varieties, unless
a specific variety is not mentioned in the claim.

It will also be interesting to see whether, on appeal, the BGH will
stay the national proceedings until issuance of the decision of the
Enlarged Board and whether it will deviate from that decision or not.

Stefan Danner

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James Packard Love
Knowledge Ecology International
mailto:james.love@keionline.org
tel. +1.202.332.2670 / U.S. mobile+1.202.361.3040, Geneva mobile
+41.76.413.6584

"If everyone thinks the same: No one thinks." Bill Walton"