EPO revokes two more DNA-sequencing patents despite Illumina appeal

The Boards of Appeal at the European Patent Office have confirmed the revocation of two DNA-sequencing patents owned by US biotechnology company Illumina, EP 1 451 351 and EP 2 338 893. Both inventions relate to labelled nucleotides, which are the basic building blocks for RNA and DNA. In particular, the patents disclose nucleotides “having a removable label and their use in polynucleotide sequencing methods”.

Next generation technology

In November 2019, the EPO had revoked EP 351 and EP 893 from their patent family, which covers labelled nucleotides. The two patents cover technology for next generation sequencing, with the office revoking them due to formal errors.

Regarding EP 351, in the first instance the opposition division concluded that claims one, six and ten of each of the patent’s main request did not fulfil the requirements of Article 123(2) EPC. This concerns whether the application of amendments is allowable. While appellant Illumina filed an appeal that its patent did comply with Article 123(2), the opponents submitted that the main request claims contained added subject matter.

The EPO Boards of Appeal rejected the appeal (case ID: T 360/20). Illumina also submitted an auxiliary request to try to overcome the issue of added matter. However, the boards did not admit the auxiliary request into the proceedings, in accordance with Article 12(6) of the Rules of Procedure of the Boards of Appeal (RPBA 2020). This provides that the boards shall not, albeit with some caveats, “admit requests, facts, objections or evidence which have not been admitted in first-instance proceedings”.

Illumina appeals rejected

Regarding EP 893, Illumina contested the reasoning of the Opposition Division, which had found it did not comply with Articles 76(1) and 123(2) EPC. Illumina submitted that claim one of the main request did comply with Article 123(2) EPC, but the opponents once again challenged for added matter.

The boards thus upheld their first-instance decision to revoke the patent (T 426/20). Again, the appellant filed an auxiliary request, which the Boards of Appeal rejected. In both cases, the decision was issued in writing. According to both decisions, Illumina stated it would not attend the oral hearings upon receipt of the preliminary opinion.

Furthermore, the EPO Boards of Appeal also issued a preliminary opinion in another opposition appeal filed by Hoffmann Eitle against Illumina’s patent EP 3 147 292. This relates to “3’-O-azidomethyl-containing nucleotides and nucleotides for DNA sequencing”. According to the preliminary opinion, the EP 292 claims contain added matter and lack inventive step.

The boards have indicated that, if Illumina does not clarify the claims in its auxiliary request within one month from 7 February 2024, this might result in the patent’s revocation.

Opposing Illumina

Recently, Illumina has not experienced a good run. In October 2023, the EPO Opposition Division revoked EP 3 363 809, covering modified nucleotides for polynucleotide sequencing. EP 809 belongs to the same patent family as EP 3 002 289, which the Boards of Appeal revoked in spring 2023. Illumina had requested a referral to the Enlarged Board of Appeal, which was rejected by the boards.

The reasoning is similar to a case concerning another patent of the same family, EP 3 587 433, covering “modified nucleotides”, which has also been revoked.

Various EPO Technical Boards of Appeal have also revoked EP 2 119 722 (T 2648/19), EP 3 438 116 and EP 3 363 809. Illumina has not appealed against the latter two decisions, meaning both are final.

Experience in biotech proceedings

As in previous proceedings, Colm Murphy, London partner of US law firm Cooley, represented Illumina. The European patent attorney also regularly files patents for the US company at the EPO.

Hoffmann Eitle represented itself, with partner Lasse Weinmann and consultant Leo Polz appearing for the firm. The two patent attorneys have frequently appeared in EPO proceedings against Illumina.

German company Qiagen also appeared as an opponent, with patent attorney Christian Kilger acting for the company. Kilger, who is name partner at the German firm CH Kilger Anwaltspartnerschaft, often represents clients from the biotechnology, pharmaceutical, diagnostics, and food and beverage sectors in opposition and patent infringement proceedings.

EP 351
For Illumina
Cooley (London): Colm Murphy (partner)

For Hoffmann Eitle
Hoffmann Eitle (Munich): Lasse Weinmann (partner), Leo Polz (consultant)

For Christian Kilger
CH Kilger (Berlin): Christian Kilger (partner, patent attorney)

EP 893
For Illumina
Cooley (London): Colm Murphy (partner)

For Hoffmann Eitle (opponent)
Hoffmann Eitle (Munich): Lasse Weinmann (partner), Leo Polz (consultant)

For Qiagen
CH Kilger (Berlin): Christian Kilger (partner, patent attorney)

EPO Boards of Appeal (Technical Board of Appeal 3.3.02)
Marcus O. Müller (chairman); members: Samuel Bertrand, Roberto Romandini