In a decision announced on December 5, 2006, the German Federal Patent Court (“Bundespatentgericht”), in a nullity action, has partially revoked the German patent DE 197 56 864 directed to neuronal or glial precursor or stem cells. The Court based its decision on § 2 (3) No. 3 PatG where it is laid down that German patents shall not be granted in respect of biotechnological inventions which concern uses of human embryos for industrial or commercial purposes. Interestingly, the claims of the patent are not directed to such uses. However, in the hearing, according to press reports, the Court stated that, for obtaining the stem cells, it had been necessary to destroy human embryos, and this was also contrary to the regulations of § 2 (3) No. 3 PatG. The written decision is not yet available, but it will be interesting to see how the judges will justify their position. After issuance of the written decision, the patentee will be allowed to file an appeal to the German Federal Supreme Court.
This decision of the German Federal Patent Court will also have some impact on a comparable case pending before the Enlarged Board of Appeal of the European Patent Office. In fact, already on November 18, 2005, the Technical Board of Appeal 3.3.8 has referred in the case T 1374/04 inter alia the following question to the Enlarged Board of Appeal: “… does Rule 23d(c) EPC [the regulation corresponding to § 2 (3) No. 3 PatG in Germany] forbid the patenting of claims directed to products (here: human embryonic stem cell cultures) which – as described in the application – 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, if said method is not part of the claims (emphasis added)?. Thus, with respect to that question, the Enlarged Board of Appeal is charged with the same question which has now already been answered in a national law suit in Germany.
It is presently not clear when the decision of the Enlarged Board, which will be the final one for examination or opposition proceedings at the European Patent Office, will be issued. Even more, it is, at present completely unclear how the Enlarged Board will decide. Inter alia, the issue is whether the regulations of the EPO 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 Art. 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.
Furthermore, in case that an appeal will be filed in Germany, it will be interesting to see whether the German Federal Supreme Court will wait for the decision of the Enlarged Board and follow this decision. In the past, in unrelated matters, the German Federal Supreme Court has stated several times that they consider decisions of the EPO very seriously, but that they are free to make their own decisions. Especially with respect to novelty, the German Patent Supreme Court has established principles of law which deviate from the practice of the EPO and of its Technical Boards of Appeal.