UK IPO UPDATES

Practice Notes on Patents for hESCs

In our last newsletter (Spring 2009 Patent issues), we reported on the Enlarged Board of Appeal ruling in Decision G2/06 - WISCONSIN ALUMNI RESEARCH FOUNDATION, in which the EBA gave a very narrow ruling against the granting of patents for human embryonic stem cells. The EBA merely ruled that claims to inventions, which at the time of filing the application required the destruction of human embryos, are not allowable but declined to pronounce any further on what should or should not be patentable in this field.

We also reported on a Practice Note from the UK Intellectual Property Office indicating that in principle it :
• will not grant claims to methods of obtaining stem cells from human embryos
• will not grant claims directed to human totipotent cells
• will grant claims directed to human embryonic pluripotent stem cells,

This Practice Notice has now been updated with one minor change, in the form of a simple proviso that claims may still be obtained directed to human embryonic pluripotent stem cells in the UK provided the invention could (at the priority date) be obtained by means other than the destruction of human embryos.

Our previous advice for applicants is largely unchanged. For inventions involving the use of human embryos, the UK Intellectual Property Office remains well disposed to granting patents, but, where possible, applicants should include a sufficient disclosure of at least one method by which the stem cells involved can be produced without using human embryos.