HOFFMANN EITLE wins EPO oppositions against DNA sequencing patents

Case Law | 26.10.2023

Patents relating to DNA sequencing technology have been subject to several patent disputes in recent years. This includes a series of EPO oppositions against patents owned by Illumina Cambridge Limited (e.g. EP 3 363 809 (EP ‘809), EP 3 587 433 (EP ‘433) and EP 3 002 289 (EP ‘289)) and against which we have been particularly active (Lasse Weinmann, Leo Polz, Sebastian Giese).

On October 13, 2023, the opposition division of the EPO revoked EP ‘809 in the first instance, following the opposition filed by HOFFMANN EITLE (representing the opponent Latvia MGI Tech Sia). The EPO reasoned that the claims of EP ‘809 contain added subject-matter, because they require an unallowable multiple selection from the original disclosure of an earlier patent application of the same patent family, contrary to the requirements of EPO case law.

In February this year, EPO had already revoked EP ‘433 in first-instance opposition proceedings for similar reasons. Finally, EP ‘289 has also been revoked by the Boards of Appeal due to added subject-matter earlier this year.

This series of revocation decisions illustrates that the EPO takes the requirements of original disclosure (Art. 123(2) EPC and Art 76(1) EPC) very seriously. Added subject-matter can form the ground for powerful attacks in EPO opposition proceedings. 

For more information on this topic, see the articles by JUVE Patent on the EP ‘809 case (Illumina loses more patents for DNA-sequencing technology - JUVE Patent (juve-patent.com)) and the EP ‘289 case (Hoffmann Eitle and MGI prevail as Boards of Appeal revoke Illumina patent - JUVE Patent (juve-patent.com)).