Wisconsin Alumni Research Foundation (EPO, G 2/06, 2008)

Dhenne Avocats · 11 October 2026

Our analysis

Summary

The Enlarged Board of Appeal held that Rule 28(c) EPC (formerly Rule 23d(c)) forbids the patenting of claims directed to products which, as described in the application, could at the filing date be prepared only by a method necessarily involving the destruction of human embryos, even where that method is not part of the claims. It declined to refer questions to the Court of Justice, the EPC providing no basis for such a referral. The decision moves the exclusion analysis to the technical teaching of the application as a whole and fixes the assessment at the filing date.

Facts and procedure

Wisconsin Alumni Research Foundation was the applicant for European patent application No. 96 903 521.1, “Primate Embryonic Stem Cells”, claim 1 of which was directed to a cell culture comprising primate embryonic stem cells. On 13 July 2004 the Examining Division refused it because the use of human embryos as starting material was described as indispensable, which fell under Article 53(a) EPC 1973 in conjunction with Rule 23d(c). On appeal, Technical Board of Appeal 3.3.08 referred four questions in T 1374/04 of 7 April 2006. The applicant also asked for a reference to the Court of Justice.

The applicable law

Rule 28(c) EPC excludes the grant of patents for biotechnological inventions concerning uses of human embryos for industrial or commercial purposes, under Article 53(a) EPC. Under Rule 26(1) EPC, Directive 98/44 is a supplementary means of interpretation, and Rule 28(c) reproduces the wording of Article 6(2)(c) of that Directive. The Enlarged Board applied, mutatis mutandis, the rules of interpretation of the Vienna Convention on the Law of Treaties (point 16).

Question

Does Rule 28(c) EPC apply to applications filed before its entry into force, and does it forbid the patenting of a product which, at the filing date, could be obtained only by destroying human embryos where the method is not claimed?

Decision

The Enlarged Board rejected the request for a preliminary reference as inadmissible: neither the EPC nor its Implementing Regulations provide for a referral to the Court of Justice (point 3), and the boards of appeal are not courts or tribunals of a Member State within Article 234 of the EC Treaty (point 4). Dior v Evora is not a suitable precedent (point 9).

On the first question, the introduction of the chapter on biotechnological inventions without transitional provisions meant that it applied to all pending applications (points 12 to 14). On the second, the rule aims to prevent the commodification of human embryos and to protect human dignity (point 18); the term “embryo”, left undefined, is not to be given any restrictive meaning (point 20). What matters is not only the wording of the claims but the technical teaching of the application as a whole, otherwise the exclusion would turn on clever drafting (point 22). Making the claimed product is industrial or commercial exploitation even where further research is intended, and the destruction of embryos is an integral part of it (point 25). Recital 42 of the Directive only preserves inventions for therapeutic or diagnostic purposes applied to and useful for the embryo (point 27). So read, the rule stays within Article 53(a) EPC and Article 27 TRIPS (points 29 and 31). On the fourth, technical developments after the filing date are irrelevant, by analogy with an insufficiency that cannot later be cured (points 33 and 34). The decision does not address the patentability of human stem cell inventions in general (point 35).

Key points for practice

• The Rule 28(c) EPC exclusion is assessed against the teaching of the application as a whole, not merely the wording of the claims (point 22).
• A claimed product which, at the filing date, could be obtained only by destroying human embryos is excluded, whatever the claim category (points 22 and 25).
• Routes to the product that emerge after the filing date do not cure the application (point 33).
• Practical point: disclose at filing a route to the product that does not involve the destruction of human embryos, since only the original disclosure counts.

Provisions applied

European Patent Convention

Art. 23, 53(a), 164; Rule 26, 28, 29; EPC 1973, Arts 53(a) and 112(1)(a), Rules 23b to 23e

European Union law

Directive 98/44, Art. 6 and recital 42; EC Treaty, Art. 234

Other instruments

TRIPS Agreement, Art. 27; Vienna Convention on the Law of Treaties

National law

Germany: Embryo Protection Act of 13 December 1990, § 8; United Kingdom: Human Fertilisation and Embryology Act 1990, section 1(1)

Case law cited

G 5/83; G 1/84; J 16/96; T 1374/04; ECJ, C-337/95 (Dior v Evora); Bundespatentgericht, 3 Ni 42/04, 5 December 2006

Related decisions

• Eisai, G 5/83, EPO Enlarged Board of Appeal, 5 December 1984, cited for the application of the Vienna Convention rules of interpretation.

Prepared by Dhenne Avocats from the text of the decision (epo.org, official English text), consulted on 11 October 2026. Only the official text is authoritative.