Munich, 02 Jul 2004
On 5 July public oral proceedings will be held at the European Patent Office (EPO) in an appeal case relating to European patent EP 0 169 672. The patented invention concerns a genetically modified rodent that, under certain conditions, develops tumours and is therefore claimed to be particularly suitable for use in cancer research. The "Oncomouse/Harvard" patent is the first patent granted by the EPO for a transgenic animal. The case will be heard by a Technical Board of Appeal of the EPO, a second-instance judicial body of the Office. The legal basis for the proceedings is the provisions of the European Patent Convention (EPC). The hearing is scheduled to continue until 9 July.
The appeal proceedings are a result of the decision by the relevant EPO Opposition Division of 6 November 2001 to maintain the "Oncomouse/Harvard" patent to a limited extent. Appeals were lodged against the Opposition Division's decision by six of the original 17 opponents, namely the British Union for the Abolition of Vivisection (United Kingdom), Bundesverband der Tierversuchsgegner (Bonn), Evangelischer Stadtkirchenverband (Cologne), Keine Patente auf Leben (Switzerland), Kein Patent auf Leben (Munich) and Wiener Tierschutzverein/Zentralverband der Tierschutzvereine (Austria). They claim, among other things, that the patent does not meet the requirements of novelty and inventive step within the meaning of patent law and are contrary to ordre public and morality. Moreover, it allegedly includes the protection of animal varieties, which is not admissible under the EPC.
At the end of the oral proceedings the decision of the Board of Appeal may be given straightaway orally or the debate may be closed and the decision issued in writing at a later date, or else the proceedings may be continued in writing. The decision of the Board could be revocation of the patent in its entirety, maintenance unamended as at first instance or in amended form, or remittal to the first instance for further prosecution. Being the last central European instance to decide on European patent applications and patents, the rulings of the Boards of Appeal are final. If the patent is not revoked centrally, revocation proceedings may be instituted before the national courts.
Information for journalists:
On 13 May 1992 the EPO granted patent EP 0 169 672 to the University of Harvard in respect of its European patent application of 24 June 1985. Oppositions against the patent were filed within the nine-month period for doing so. The opposition procedure terminated in November 2001 and led to maintenance of the patent in amended form. Appeals against the decision of the Opposition Division were lodged in March 2003.
The oral proceedings are public. They start at 09.00 hrs on 5 July 2004 and are scheduled to last until 9 July.
The appeals procedure before the Boards of Appeal of the European Patent Office
The legal means to review the grant of a European patent centrally are the opposition and appeal procedures before the EPO. An opposition can be filed by any third party within a period of nine months from mention of grant of the patent and may result in either revocation of the patent or its maintenance in full or in amended form. Oppositions are heard by an Opposition Division in a first-instance administrative procedure. In 2003, approximately 5.2% of the European patents granted were opposed and the Office handled about 1 900 opposition cases. Appeals lie from decisions reached by the EPO at first instance in examination and opposition procedures. The Boards of Appeal of the EPO deal with appeals at second and final instance. The Boards enjoy judicial independence and are composed of technically and legally qualified members who exercise the function of independent judges. The Boards can be compared to the highest national courts acting in patent litigation cases. Their decisions are based on the European Patent Convention, the legal basis for the grant of European patents.
The European Patent Convention (EPC)
The EPC regulates the handling of patent applications under a single grant procedure in Europe. Under the EPC, patents may only be granted for inventions which are new, involve an inventive step and are capable of industrial application. Currently, there are 28 EPC contracting states: Austria, Belgium, Bulgaria, Cyprus, the Czech Republic, Denmark, Estonia, Spain, Finland, France, Germany, the Hellenic Republic, Hungary, Ireland, Italy, Liechtenstein, Luxembourg, Monaco, the Netherlands, Poland, Portugal, Romania, Sweden, Slovenia, Slovakia, Switzerland, Turkey and the United Kingdom. A number of other countries are expected to accede in the near future.
The European Patent Office (EPO)
The EPO is the executive arm of the European Patent Organisation, an international organisation set up by the contracting states to the EPC. The EPO is not a European Union institution. It is responsible for the practical functioning of the European patent system. The EPO's main task is to grant European patents in respect of inventions in all industrial sectors with validity in the EPC contracting states. This is done by means of a centralised examination procedure: on the basis of a single patent application, filed in one of the three official languages (English, French and German), it is possible to obtain patent protection in some or all of the EPC contracting states.
The Office receives approximately 162 000 patent applications per year, has published over 1.8 million applications and granted more than 650 000 European patents since its creation in 1977. Its more than 6 000 staff are located at the headquarters in Munich, the branch at The Hague and the sub-offices in Berlin and Vienna. The independent Boards of Appeal are located in Munich.
Public access to information on granted patents
The EPO provides for a maximum of transparency and information on its activities. Once a European patent application has been published, the file relating to it is open to inspection. This means that any member of the public can view the communications between the Office, its instances and the parties involved in the procedure. Such file inspections can be made online and are free of charge. Furthermore, all European patent applications and patents can be accessed on the Internet at www.espacenet.com, while any legal and procedural status information can be obtained from the EPO's epoline® server. Procedural information on the patent in suit can be retrieved in the Online European Patent Register.
For further information, please contact:
European Patent Office