Patent decision

BL number

O/248/13

Concerning rights in

GB1008930.8

Hearing Officer

Mr H Jones

Decision date

13 June 2013

Person(s) or Company(s) involved

Aueon Inc

Provisions discussed

Section 1(1)(b), 1(2)(c), 14(5)(b)

Keywords

Clarity, Excluded fields (refused), Inventive step

Related Decisions

None

Summary

The application relates to a method of generating a list of cancer drug treatment options based on the status of molecular markers derived from a sample of a tumor in a patient. It is claimed as a method of diagnosing cancer which comprises the steps of interrogating a computer-implemented database and producing a list of efficacious drug treatment options. The examiner argues that the invention is not a method of diagnosis and that the claim, as a consequence, is unclear. The examiner also argues that the invention is excluded from patentability as relating to a computer program as such. The applicant insists that the invention can be defined in terms of a method of diagnosis, and argues on the basis of the EPO Enlarged Board of Appeal Opinion in G1/04 that methods of diagnosis are specified in the EPC as being inventions. The Hearing Officer reviewed the requirements for methods of diagnosis set out by the Enlarged Board of Appeal and found that the invention did no relate to such a method. He went on to find that the invention was excluded as being a program for a computer as such. It was not necessary to consider a separate argument on lack of inventive step.

Full decision O/248/13 77Kb