For European patents, methods for treatment by surgery or therapy are explicitly excluded from patentability by the legislation (Article 53 EPC), although the case law of the European Patent Office has evolved towards a more permissive practice than in the past. Medical devices are not excluded, however, and may be the subject of a European patent application.
In the United States, patent law contains no specific restrictions on the patentability of such methods and medical devices (35 USC 101). There is, however, a restriction in that medical practitioners cannot be convicted of infringement of a medical activity (35 USC §287(c)).
These differences in legislation have an impact on the way patent applications are drafted, depending on whether patent protection is sought in Europe, the United States, or both. In particular, in the case of a first European filing, it is advisable to file claims essentially relating to a medical device and/or a method likely to escape legal exclusion. The filing of a future US patent application, under the priority of the first European application, can nevertheless be anticipated. To do this, it is advisable to have inserted, in the description of the European patent application, the text of the future U.S. patent claims covering the method for treatment that would be excluded in Europe. These claims will then be valid for the US patent application and will benefit from the priority right attached to the European patent application, even if they did not appear in the claims of the European patent application.
If you have any questions about the protection of patents for surgical methods, please contact Lavoix Romain Toucas and Damien Colombié.