CH KILGER wins twice in EPO Board of Appeal Proceedings

EPO revokes two more DNA-sequencing patents despite Illumina appeal.

The EPO Boards of Appeal have confirmed the revocation of two more Illumina patents concerning DNA-sequencing technology. The same boards also issued a negative preliminary opinion concerning a third patent held by the US manufacturer of genetic engineering equipment.


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”.

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