EPLAW PATENT BLOG

EPO – Technical Board of Appeal 3.3.08 renders decision on automatic genotype determination in the field of bioinformatics. Features pertaining to a general manner of analysing data are found to be ignored in assessing inventive step

Posted: October 27th, 2010

Beckman Coulter Inc. (patentee) v. Roche Diagnostics GmbH (opponent), Technical Board of Appeal 3.3.08, 23 June 2010, Case No. T 0784/06-3.3.08, with thanks to Stefan Steinbrener, Bardehle Pagenberg, for sending in the case, summary and head note

This appears to be the first decision of an EPO board of appeal explicitly dealing with aspects of bioinformatics. Board 3.3.08 expressed its clear intention to apply the established case law on computer-implemented inventions mainly developed by boards in electricity and physics also in the field of molecular biology, not least because it considers this case law to have now been confirmed by the Enlarged Board.

Hence, the Board was guided by the principle that non-technical features, such as the mental activities found in steps B to E of claim 1, were not to be ignored in assessing inventive step if they interacted with the technical activity of step A  of claim 1 for solving a technical problem and thereby contributed to the technical character of the claimed subject-matter. In the Board's view, such interaction was required by case law to lead to a "tangible technical result". Since the patent claimed and disclosed steps B to E too generally so that a skilled reader lacked the information how to proceed from step A to step E, no such interaction leading to a "tangible technical result" could be established, with the consequence that the features of steps B to E did not count for inventive step and the patent was revoked.

Read the decision (in English) here.

Read a summary in English provided by Bardehle Pagenberg, here.

Head note: Stefan Steinbrener

 

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