1. Introduction
In a recent decision dated 13 April 2026, T 0941/24, the Board of Appeal set aside a refusal based on Article 53(c) EPC and ordered grant. The case turns on a narrow but recurring issue in practice: when a claimed method is to be regarded as comprising or encompassing a surgical step within the meaning of Article 53(c) EPC.
Of particular interest is the Board’s discussion of the term “encompass” as used in G 1/07 and its role in assessing whether a method falls within the surgical-method exclusion.
2. Background and Procedural History
The application concerns a medical tracking system with two or more communicating sensor devices. Claim 7 of the (new) main request is directed to a method for determining the relative position between two sensor devices by:
determining, with each device, sensor data relating to the position of a marker device; and
determining the relative position by combining the sensor data in a control unit.
The examining division refused the application, considering that the claimed method constituted a method for treatment of the human or animal body by surgery within the meaning of Article 53(c) EPC.
In the appeal proceedings, the appellant filed a new main request which differed from the previous main request by the deletion of former method claim 8 and the renumbering of the remaining claims.
3. “Comprise” and “Encompass” in the Sense of G 1/07
The Board addressed the use of the terms “comprise” and “encompass” in G 1/07. It observed that if “encompass” were understood in a broad sense—covering any conceivable implementation falling within the scope of a claim—then:
“virtually all method claims would encompass a surgical step.”
The Board therefore considered the context in which these terms are used in G 1/07. In particular, it referred to the formulation “a step encompassing an embodiment” and explained that “encompass” is used in relation to embodiments of a claimed step, rather than to any possible implementation of the claimed method as a whole.
It further stated that:
“additional steps that are defined only in the dependent claims are not necessarily encompassed by the independent claim.”
This analysis is central to the subsequent assessment under Article 53(c) EPC.
4. No Surgical Step in the Claimed Method
(1) No attachment to a bone as part of the method
The Board accepted that attaching a sensor device to a bone constitutes a surgical step. However, it found that claim 7 neither explicitly includes such a step nor implicitly requires it.
In particular, the Board found that the method can be carried out regardless of whether the sensor devices are attached to a target, for example with freely movable devices or devices attached to non-anatomical structures. Accordingly, attachment to a bone is not:
“implied as an integral part of the claimed method.”
(2) No movement of a bone required
Although the description discloses surgical workflows involving the movement of bones, the Board held that the claimed method itself concerns a:
“passive, one-time determination which does not rely on any motion.”
It therefore concluded that the claimed method does not comprise or encompass the movement of an exposed bone.
(3) Conclusion under Article 53(c) EPC
On this basis, the Board concluded that the method defined in claim 7:
“does not comprise or encompass any surgical steps”
and therefore does not fall within the exclusion under Article 53(c) EPC.
5. Relation to Earlier Case Law
The decision is consistent with earlier case law on Article 53(c) EPC.
In G 1/07, the Enlarged Board held that a method is excluded where it includes an invasive step involving a substantial physical intervention on the body and associated health risks. It also stated that a claim cannot be left to encompass an embodiment that constitutes a surgical method. The present decision provides guidance on how this principle is to be applied, in particular with regard to the meaning of “encompass”.
In T 923/08, the Board held that where a method necessarily requires a surgical step, that step is to be regarded as an essential feature of the method, even if not explicitly recited. In the present case, by contrast, the Board found that attachment to a bone is not necessary for carrying out the claimed method.
In T 1526/17, the claimed method required pivoting a bone to generate measurement data. The Board considered such movement to be an integral part of the method and to constitute a surgical step. In the present case, the claimed method does not rely on any such physical manipulation.
6. Clarity and Essential Features (Article 84 EPC)
The examining division had also argued that the claim lacked an essential feature, namely the attachment of the sensor device to a bone.
The Board rejected this objection, holding that the relative position between the sensor devices can be determined regardless of whether they are attached to a target. Accordingly, attachment to a bone does not constitute an essential feature of the claimed method, and the claim was found to comply with Article 84 EPC.
7. Outcome
The Board found the objections in the refusal decision unconvincing, set aside the decision under appeal, and remitted the case to the examining division with the order to grant a patent on the basis of the amended main request.
8. Takeaways
The decision shows that the assessment under Article 53(c) EPC depends on the actual content of the claimed method. A method is not excluded merely because it may be used in a surgical context. The decisive question is whether a surgical step is explicitly included in the claim or implicitly required as an integral part of the method.