Deconstructing G 1/07: T 0941/24 on Surgical Steps and Implicit Features
Board 3.2.02 clarifies the distinction between 'comprising' and 'encompassing' a surgical step under G 1/07. The decision provides a robust framework for defending medical tracking methods under Article 53(c) EPC.
The doctrinal boundary defining what constitutes a method for treatment by surgery under Article 53(c) EPC has been heavily litigated since the Enlarged Board of Appeal established its framework in G 1/07. A recurring tension lies in determining when a generic method claim impermissibly captures a surgical embodiment. In T 0941/24, Technical Board of Appeal 3.2.02 addresses this boundary directly, offering a precise linguistic dissection of the Enlarged Board's terminology to rescue a medical tracking invention.
The sensor tracking method
The application, filed by Brainlab SE, concerns a medical tracking system using two sensor devices to determine their relative position. By combining sensor data at a control unit, the system can function even if data from one sensor is of low quality. The examining division refused the application, finding that independent method claim 7 defined a method for treatment by surgery.
The examining division's reasoning hinged on the fact that the application described workflows where sensors were attached to exposed bones during knee surgery. Because a dependent claim explicitly recited attaching each sensor to a target, the examining division concluded that the independent claim implicitly encompassed this surgical embodiment, violating the principles of G 1/07.
Deconstructing G 1/07 terminology
The panel engaged in a close textual analysis of G 1/07, specifically distinguishing between the verbs "comprise" and "encompass" (reasons 3.1.3–3.1.6). The board noted that if "encompass" simply meant that a generic claim covered all conceivable specific implementations—including surgical ones defined in dependent claims—then virtually all method claims would fail under Article 53(c) EPC (reasons 3.1.4).
Instead, the board clarified that G 1/07 uses "comprise" in relation to a step that is explicitly recited in a method claim. Conversely, "encompass" refers to an embodiment or step that the patent application mentions as a specific implementation of a more generic claimed method step (reasons 3.1.6). Crucially, the board held that additional steps defined only in dependent claims are not necessarily encompassed by the independent claim (reasons 3.1.7).
Implicit steps and bone attachments
Applying this refined framework, the board evaluated whether claim 7 implicitly required a surgical step. While acknowledging that attaching a sensor directly to a bone is a surgical step, the board observed that claim 7 did not explicitly recite any attachment step (reasons 4.1.1). Furthermore, the claimed method could be executed using freely movable sensors carried by a user or attached to non-surgical medical hardware (reasons 4.2.1).
Because the method did not require attachment to a target to function, the bone attachment was not an integral, implicit feature of the method. The board also dismissed concerns regarding the movement of an exposed bone, noting that the claimed method was a passive, one-time determination that did not rely on any motion of the sensors or targets (reasons 4.3.2).
Essentiality under Article 84 EPC
The examining division had also raised an objection under Article 84 EPC in conjunction with Rule 43(3) EPC, arguing that for the bone-attachment embodiment, the attachment step was a missing essential feature. The board swiftly dismantled this argument using the same logic applied to the surgical exception. Since the relative position between the sensors could be determined regardless of whether they were attached to a target, the attachment was not essential to carrying out the invention (reasons 5.2). The decision was set aside and the case remitted with an order to grant.
Practical implications
This decision provides a highly useful framework for defending medical device method claims. When facing an Article 53(c) EPC objection based on surgical embodiments in the description, practitioners should rigorously analyze whether the surgical action is a specific implementation of an explicitly claimed generic step, or merely an additional, unclaimed action. If the claimed method can be fully executed in a non-surgical context—such as with freely moving sensors or on external hardware—the surgical step is not an implicit requirement. Furthermore, this case confirms that the mere historical presence of a dependent claim reciting a surgical step does not fatally infect the independent claim, provided the independent claim stands on its own non-surgical merits.