Patent attorneys love to argue over the meaning of words, but in biology, this pursuit turns into a literal minefield. Definitions in this science are constantly shifting: what was once considered a single species may today, thanks to DNA analysis, turn out to be something entirely different. A recent decision by the Board of Appeal of the European Patent Office (EPO) in case T 630/24 serves as a striking illustration of how a conflict between historical names created by humans and actual genetics can lead to the revocation of a patent.
The core of the case involved a development by the University of Tokyo regarding the use of certain bacteria to strengthen the immune system. The scientists sought to patent a composition containing bacteria belonging to specific genetic groups (clusters). However, the Patent Office rejected them, citing a violation of the “gold standard” principle — a strict rule that prohibits adding anything to a patent description that was not present in the original application.
The primary conflict centered on the terms “genus” and “cluster.” For years, scientists used the concept of “genus” (e.g., the genus Clostridium) to group bacteria based on external characteristics. This is a historical classification devised by humans long before we learned to read DNA. In contrast, a “cluster” is a modern genetic classification that unites all descendants of a single ancestor based on their genetic code. The problem is that these two systems do not always align.
For better context, consider the history of cats. Long ago, biologist Carl Linnaeus grouped almost all wild cats (lions, tigers, domestic cats) into a single genus, Felis. Today, thanks to genetics, we know that lions and tigers belong to a separate branch (Panthera). A similar situation exists with chrysanthemums: florists are so accustomed to the name that, despite genetic evidence proving they are different plants, scientists had to compromise and retain the old name to avoid shocking gardeners.
In the case of the bacteria, the applicant attempted to “broaden” their patent. Initially, they wrote about bacteria of the genus Clostridium falling within certain clusters. Later, however, they decided to remove the word “Clostridium” and leave only the cluster designations, as genetically these clusters are much broader and include other species of bacteria. The Patent Office ruled this an allowable intermediate generalization. If you only spoke of one specific group in the original application, you cannot later claim an entire genetic family, parts of which you never even mentioned.
This decision is a vital reminder of how difficult it is to describe biological inventions. Science moves forward, names change, and old terms (such as “genetically modified”) become too narrow following the emergence of new technologies like CRISPR. The University of Tokyo’s problem was not with the biology itself, but with how the document was drafted: they simply did not provide a description option that was not anchored to the bacteria’s old Latin name.
This case teaches us that in biotechnology patenting, one cannot rely solely on human-assigned names for living organisms. Nature is far more complex than our dictionaries, and what seemed like a clear definition yesterday may become a legal trap tomorrow, leaving your invention defenseless against copying.
Founder of Research & Patent group Intectica, author of patent algorithms for solving problems in the pharmaceutical industry, patent attorney certified in all intellectual property objects (Patents, Design, TM), with education in chemistry and law, chief expert of the patent institution of Ukraine UKRPATENT (1997-2004). Member of international organizations, including ECTA, PTMG, UAM, lecturer and blogger.
