Key points
- Is Article 53(c) EPC to be examined on the basis of the claims, or on the basis of the overall description?
- The Board: "if essential features of the invention are missing from the claim, these must be read into the claimed method when assessing whether it falls under the exceptions of patentability in accordance with Article 53(c) EPC."
- "It must therefore be clarified whether the claimed invention is fully and completely defined by the features of claim 1. For this purpose, the description, among other elements, must be consulted."
- Turning to the case at hand: "Claim 1 concerns a method of managing delivery of an orthodontic treatment plan [M1]. As argued by the appellant, the claim only mentions steps effectively performed before (features [M2] to [M4]) and after (features [M5] to [M7]) the actual treatment, i.e. the application of the appliances to the patient's teeth. However, as conceded by the appellant, the treatment step is a prerequisite for the claimed method to be applicable. This is not only evident from the wording of the claim and in particular from the step of comparing a digital representation of an actual arrangement of the patient's teeth following administration of a set of appliances to a planned arrangement (feature [M6]). For this step to be carried out, it is inevitable that the appliances have been applied to the patient's teeth beforehand. It is also evident from the flowchart in Figure 3A and the corresponding description (A-Publication, paragraphs [0021] to [0023]). Omitting the step 210 of administering appliances would render the step 212 of progress tracking meaningless since there would be no progress that could be tracked."
- "It follows that administering a set of appliances (the application of the appliances to the patient's teeth) is an essential feature of the invention. This method step must therefore be seen to be encompassed by the claimed method because otherwise the claimed invention would not be fully and completely defined by the features of the claim (see G 1/07, point 4.3.1 of the Reasons)."
- "The subject-matter of claim 1, therefore, is excluded from patentability under Article 53(c) EPC."
EPO T 2612/19 -
The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.
source http://justpatentlaw.blogspot.com/2022/05/t-261219-medical-method-omitting-step.html
