IP Information & News

Plant patentability

Mark Green

By Mark Green

Partner

On 25 March 2015 the European Enlarged Board of Appeal issued decisions on consolidated referrals G2/12 and G2/13 as to whether products — namely plants or parts thereof obtainable by essentially biological processes — are patentable at the EPO (European Patent Office). The Board has answered, in broad terms, in the affirmative. The cases are referred to as Tomatoes II and Broccoli II.

The law

Article 53(b) EPC (European Patent Convention) states that European patents shall not be granted in respect of “plant or animal varieties or essentially biological processes for the production of plants or animals; this provision shall not apply to microbiological processes or the products thereof…”

The tomatoes referral

European Patent No. 1211926 as granted to The State of Israel, Ministry of Agriculture, concerned a method for breeding tomatoes having a reduced water content and a tomato product capable of natural dehydration. This patent was opposed by Unilever N.V. and was maintained in amended form by the Opposition Division. The decision was appealed by both the patent proprietor and the opponent (appeal T1242/06), although the opponent dropped its appeal during the process. A first referral (G1/08) was made to the Enlarged Board of Appeal, concerning the circumstances under which processes for the production of plants fall within the ‘essentially biological’ exclusion of Article 53(b) EPC. This case was referred to as ‘Tomatoes I’.

The patent proprietor amended the claims on file to delete the process claims which would likely be considered as being directed to unpatentable, essentially biological processes. The patent claims remaining were then only directed to tomato fruits or tomato fruit products. Although the Appeal Board indicated that such products would not be excluded as plant varieties under Article 53(b) EPC, it was concerned that allowing these claims might render the exclusion to essentially biological processes ineffective, since these products would effectively need to be produced by such a method. The Appeal Board referred the following questions to the Enlarged Board:

“1. Can the exclusion of essentially biological processes for the production of plants in Article 53(b) EPC have a negative effect on the allowability of a product claim directed to plants or plant material such as a fruit?

2. In particular, is a claim directed to plants or plant material other than a plant variety allowable even if the only method available at the filing date for generating the claimed subject matter is an essentially biological process for the production of plants disclosed in the patent application?

3. Is it of relevance in the context of questions 1 and 2 that the protection conferred by the product claim encompasses the generation of the claimed product by means of an essentially biological process for the production of plants excluded as such under Article 53(b) EPC?”

The broccoli referral

European Patent No. 1069819 as granted to Plant Bioscience Limited concerned a method for the selective increase of anticarcinogenic glucosinolates in Brassica species, comprising a step of crossing particular Brassica species and the selection of hybrids with increased levels of the compounds of interest. The patent claimed a brassica plant or a part or a seed thereof, where the plant was produced according to the method or by a hybrid crossing. The appeal proceedings (T83/05) arose from appeals filed by two opponents — Syngenta Participations AG and Group Limagrain Holding — against the decision of the Opposition Division to maintain the patent in amended form (containing method, product and product-by-process claims).

The first referral from this case to the Enlarged Board of Appeal, known as ‘Broccoli I’, was similar to Tomatoes I, and related to the interpretation of the exclusion for essentially biological processes in Article 53(b) EPC. The Enlarged Board handed down the Decision as G2/07. The proprietor amended the claims to product and product-by-process claims. The Appeal Board required clarification regarding the patentability of product-by-process claims where the process is an essentially biological process, along with a decision on the allowability of disclaiming such a process from the claims. Further, the Broccoli patent concerned plants and plant parts rather than fruit as in the Tomato case. The questions also took into account that Broccoli claimed a plant rather than just a fruit.

“1. Can the exclusion of essentially biological processes for the production of plants in Article 53(b) EPC have a negative effect on the allowability of a product claim directed to plants or plant material such as plant parts?

2. In particular:

(a) Is a product-by-process claim directed to plants or plant material other than a plant variety allowable if its process features define an essentially biological process for the production of plants?

(b) Is a claim directed to plants or plant material other than a plant variety allowable even if the only method available at the filing date for generating the claimed subject-matter is an essentially biological process for the production of plants disclosed in the patent application?

3. Is it of relevance in the context of questions 1 and 2 that the protection conferred by the product claim encompasses the generation of the claimed product by means of an essentially biological process for the production of plants excluded as such under Article 53(b) EPC?

4. If a claim directed to plants or plant material other than a plant variety is considered not allowable because the plant product claim encompasses the generation of the claimed product by means of a process excluded from patentability under Article 53(b) EPC, is it possible to waive the protection for such generation by “disclaiming” the excluded process?”

Case consolidation by the enlarged board

The Enlarged Board consolidated the two referrals and invited comments from the patent proprietors, from the opponents of the Broccoli case and from the President of the EPO.

State of Israel, the proprietor of the Tomato patent, indicated that the referral should be deemed as inadmissible in view of G1/98, which determined that only product claims directed to plant varieties are excluded from patentability under Article 53(b) EPC. Further, it was indicated that if the referral was admissible, then G2/07 and G1/08 (the first referral decisions) should be reviewed to exclude only processes which result directly in a plant variety. Plant Bioscience Limited, the proprietor of the Broccoli patent indicated that the first question of the referral should be answered in the negative and that G2/07 and G1/08 should be reviewed as they have led to a second referral and the exclusions should be narrow. Further, it was submitted that those decisions should not be extended to product claims which are clearly distinguished from process claims in Article 53(b).

The Broccoli opponents requested that questions 1, 3 and 4 should be answered in the negative and question 2 in principle in the affirmative and argued that to exclude plants which are obtainable by an essentially biological process would result in nothing being patentable in the plant world.

The President of the EPO concluded that Article 53(b) EPC did not have a negative effect on the allowability of product claims to plants. He commented that there is no indication that the exclusion of essentially biological processes should be extended to products.

The interest in the case was such that numerous amici curia briefs were filed by professional representatives, patent attorney associations, interest groups, plant breeders, politicians, and so on, of varied views.

The decision

The Enlarged Board decided that the referrals were admissible. The Board noted that G1/98 did not comment on the extension of the exclusion to essentially biological processes to products and that G1/98 only concerned the plant variety exclusion. The referrals were necessary to provide a uniform application of the law.

The Board decided that there was no need to review G1/98, G2/07 or G1/08, as the referring questions do not relate to the plant variety exclusion or to the patentability of essentially biological processes.

The exclusion of Article 53(b) EPC was then examined to determine whether a narrow or broad interpretation should be given to the language. The Board decided that there was no evidence that the term ‘essentially biological processes for the production of plants’ should extend beyond processes to products defined or obtained by such processes. The Board then considered whether the legal impact of this understanding of Article 53(b) EPC necessitates the broadening of the scope of the process exclusion (if the interpretation is at odds with the legislator’s intention), where it was decided that extension of the restriction was not required. The Board noted that extending the exclusion to cover plants or plant materials would introduce an inconsistency to the EPC, as such products are generally eligible for patent protection (other than plant varieties). Further, the Board noted that although product or product-by-process claims may encompass and provide protection for not only the product but for the use of a product and production of the product, the relevant point of law is whether subject matter is excluded from patentability, not the protection conferred by such a claim.

The Board therefore concluded that claims directed to plants or plant material such as a fruit or plant parts, other than a plant variety, are not excluded from being patented under the ‘essentially biological process’ exclusion of Article 53(b) EPC. Thus in the case of G2/12 — Tomatoes II — the Board answered the first and third questions in the negative and the third question in the affirmative, using a double negation. In the case of G 2/13 — Broccoli II — the first and third questions were again answered in the negative and the second question was again answered in the affirmative, using a double negation. The Board indicated that the fourth question did not require an answer.

The effect of the decision

The decision means that claims directed to novel and inventive plants obtained by methods which include breeding steps, as opposed to plant varieties, should in principle be allowable, whether claimed in product per se or product-by-process format. This is good news for plant breeders. However, at least one pressure group, the Berne Declaration and SWISSAID has stated that the decision favours giant agrochemical companies and will hinder innovation in the area of plant and animal selection from small plant breeders.

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