"Edinburgh" patent limited after European Patent Office opposition hearing / Result of oral proceedings on the "Edinburgh" patent, held in Munich, 22 - 24 July

Munich (PROTEXT/ots) - The much-discussed "Edinburgh" patentis to be maintained in an amended form, so that it no longerincludes human or animal embryonal stem cells. This was decidedtoday after a three-day public hearing at the European PatentOffice (EPO) before the Opposition Division appointed to considerthe case.

The Opposition Division took the view that the granted patentfailed to comply with the requirements of Article 83 and Article53(a) in conjunction with Rule 23d(c) of the European PatentConvention (EPC). Article 83 stipulates that the invention mustbe disclosed in a manner sufficiently clear and complete for itto be carried out by an expert in the relevant field. Rule 23d(c)provides that uses of human embryos for industrial andcommercial purposes are excluded from patentability.

The Opposition Division referred to its earliercommunication, issued on 14 April 2000, stating that thesubject-matter of the patent had never included the cloning ofhumans or animals. Long before the end of the opposition period,the patent proprietor had also voluntarily limited the patent toexclude human germ- line intervention.

The Opposition Division emphasised that it was bound in itsdecisions by the EPC and the applicable international andEuropean law, including the EU Biotechnology Directive. These,and not national law - such as the German Law on the Protectionof Embryos - are the basis for today's decision.

In the "Edinburgh" case, the opposition procedure, anchoredin the EPC, has once again proved its worth as an effective andtransparent means of reviewing patents granted by the EPO. Theparties will have an opportunity to contest the outcome of thehearing by instituting second-instance proceedings before one ofthe EPO's Technical Boards of Appeal. The written statement ofthe reasons for the Opposition Division's decision will beissued in the coming months.

Notes to journalists

1. The "Edinburgh" patent is European patent No. EP 0695351,with the title "Isolation, selection and propagation of animaltransgenic stem cells". The grant of the patent had led tofierce protests and triggered a major public debate on thepatenting of stem-cell technology.

The contested patent describes a method of using geneticengineering to isolate stem cells - including embryonic stemcells - from more differentiated cells in a cell culture inorder to obtain pure stem cell cultures. The public debatecentred on whether the patent extended to humans.

2. The hearing is part of the opposition procedure providedfor under the European Patent Convention. This legal rightenables anyone to contest European patents. Oppositions arefiled against about 6% of the European patents granted eachyear. The opposition period ends nine months after the patent isgranted. In a special procedure similar to a court hearing,involving the patent proprietor and the opponents, theOpposition Division of the EPO decides as an impartial arbiterwhether the opposed patent should be maintained, amended orrevoked. In the "Edinburgh" case, the Opposition Divisioncomprised three patent examiners and a legal expert.

ots Original Text Service: European Patent Office Internet:http://www.presseportal.de

3. For further information, please contact: RainerOsterwalder, Press Department, European Patent Office, D-80298Munich

Telephone: (+49-89) 2399-5012 Fax: (+49-89) 2399-2850 Mobile:(+49-173) 9461630

e-mail: rosterwalder@epo.org

4. Background documents and press releases on this case,together with general information on the Office, may be obtainedfrom the EPO website: www.european-patent-office.org

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