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SHEBEKO / SHUTTERSTOCK.COM
3 March 2015Biotechnology

New recipes for Tomatoes and Broccoli

In October 2014, a large inflatable tomato greeted officials at the Enlarged Board of Appeal of the European Patent Office (EPO). Surrounding the officials were protestors waving placards that said “free broccoli” and “free tomato”. The demonstration was organised by No Patents on Seeds, a coalition of non-governmental and farmers’ organisations concerned about patents covering seeds, plants and farm animals. In addition, an online petition set up by campaigning group Avaaz to stop the further patenting of fruit and vegetables in Europe has so far generated more than two million signatures.

The patent in the Tomatoes II case was opposed by consumer goods company Unilever, while crop business Syngenta challenged the patent in the Broccoli II case. The latest patents follow earlier bids by the same parties that were rejected by the Enlarged Board. These earlier patents were rejected, in 2010, because they covered an “essentially biological process” which, according to article 53 (b) of the European Patent Convention (EPC), cannot be patented.

Thomas Leonard, partner at law firm Kilburn and Strode, says: “If you claim a method that encompasses an essentially biological process for the production of plants or animals then it is not patentable, even if you have steps before or after that are of a technical nature. If your claimed method includes the essentially biological step of sexual crossing, then it is not patentable,” he adds.

Both patents, however, have returned in a modified form, incorporating ‘product-by-process’ claims. As Leonard explains, process claims cover the steps taken to create the product; product claims are directed to the end result of the process; and product-by-process claims seek to protect the end product as defined by the process through which it is made.

Leonard uses the analogy of a cake—the recipe is the process, the cake is the product, and the cake defined by the recipe is the product-by-process.

“In principle, a patent applicant is allowed to define a product in terms of the process by which it is made if it is not possible to define the product in any other way and the product itself meets the requirements of patentability. On the flipside, if you have an inventive/novel process then you cannot necessarily have a product-by-process claim unless the product itself is patentable.”

The decisions by the Enlarged Board in Tomato and Broccoli, which dealt with the first patents, made clear that the processes listed in the applications are not patentable. However, in the latest cases both parties have raised the question of whether the product of a non-patentable process is patentable.

The Technical Board of Appeal referred Tomatoes II and Broccoli II to the Enlarged Board because it was worried that if the modified patents were granted, the “circumvention of the exclusion” of patentability, listed in article 53 (b), could be simply down to “a matter of skilful drafting, thereby diminishing the consistency and persuasiveness of the legislative framework of the EPC with regard to patentable subject matter”.

Liz Cohen, partner at law firm Bristows, feels that Plant Bioscience has raised the issue of how a patent is drafted. She says: “One of the questions referred to the Enlarged Board in Broccoli II asks whether it would be possible to waive the protection of a process conferred by a product claim by disclaiming the excluded process.

“The proprietor of the broccoli patent application filed an auxiliary request attempting to disclaim the ‘essentially biological process’ with the following wording: ‘wherein the claim does not encompass an essentially biological process for producing the plant’,” she adds.

Her conclusion is that Plant Bioscience has not done enough to assuage the concerns of the Technical Board and that the application will ultimately be rejected. “Given the guidance on disclaimers provided by the referring Technical Board, it may prove difficult to formulate a claim as to exclude ‘essentially biological processes’. On this basis, it seems unlikely that the Enlarged Board will consider the product claims to be patentable,” she says.

It is not, however, just the language of the patents in Tomatoes II and Broccoli II that might give Enlarged Board officials headaches, but also the language of the EPC rules themselves and the efforts made to interpret them. Article 53(b) of the EPC is seemingly clear on what is not patent-eligible, as it states: “European patents shall not be granted in respect of plant or animal varieties or essentially biological processes for the production of plants or animals.”

"In the latest cases both parties have raised the question of whether the product of a non-patentable process is patentable."

However, this has been challenged by continued developments in genetic engineering. Developments concerning genetically modified seeds mean that the simple rule of what constitutes an “essentially biological process” is much more difficult to work out. Ultimately, says Leonard, the refusal of the applications in the original Tomato and Broccoli referrals made it clear that the methods themselves are not patentable, but it is not apparent whether that exclusion  should be further expanded to cover products made by those processes.

“If you say it is being excluded then you are arguably making the exclusion broader than it is intended to be, because the exclusion is about methods, not products. We have seen reluctance from the Enlarged Boards to expand exclusions beyond their originally intended scope, such as in the methods of diagnosis referral in G1/04 (diagnostic methods),” Leonard says.  “However, we have seen in other fields, notably in the area of human embryonic stem cells, that products made by excluded processes are not considered patentable.

“In the situation of G2/12 (Tomatoes II) and G2/13 (Broccoli II), if the Enlarged Board takes a similar approach, the outcome will not be a welcome one for the patentees,” he adds.

More control

On the other hand, groups such as No Patents on Seeds would like to see this level of exclusion extended. In a report published in November, called European patents on plants and animals—is the patent industry taking control of our food?, the group states that around 2,400 patents covering plants have been granted, and 1,400 concerning animals, since 1980. The group says this represents an “abuse of patent laws”.

Such applications show no sign of slowing down, according to the group, which estimates that around 7,500 applications for plants and 5,000 applications for animals are pending at the EPO.

In the report the group writes that “it appears the EPO have in fact intentionally created an unprecedented situation full of legal absurdities. If all plants with specific characteristics and all processes for breeding are claimed, there is a high likelihood that the patent will be granted”.

The authors of the report again refer to the language of the claims in Tomatoes II and Broccoli II and raise similar concerns to those
of the Technical Board, pointing to the way patent applications covering plants and animals are written.

No Patents on Seeds also draws attention to the effects such patents are having on competition.

“These patents granted by the EPO promote marketing concentration, hamper competition, and serve to promote unjust monopoly rights. Such patents have nothing to do with traditional patent law, or with giving fair rewards and incentives for innovation and inventions.”

While this may be a matter for competition, rather than intellectual property, law, Cohen says: “The interaction between patent law and competition law is a complex and highly contentious issue. By its very nature a patent is designed to reward innovation and award the innovator a right to prevent third parties from using that technology for a limited period of time.”

Judging by the two million people who have signed Avaaz’s petition, issues such as the patenting of fruit and vegetables are clearly contentious. One of the reasons for people to sign the petition is that only five companies own 95% of the vegetable seeds market in the EU. That statistic, from a European Commission report published in 2013, causes some concern for the people who have signed the petition.

The Enlarged Board is not tasked with considering emotional arguments about monopolies, but will instead concentrate on striking a balance between what can and cannot be patented.

The assembly line of patents on plants and animals continues unabated and looks set to increase further in 2015. But for Cohen, the patents in the Tomatoes II and Broccoli II cases are unlikely to be granted. She says: “The justifications for refusing the patents are practicability, public policy and morality. From the perspective of the proprietor of the patent, it may be impractical to police whether or not your patent has been infringed. For these reasons it is important that the exclusion is respected.”

Despite the uncertainty over the approach the Enlarged Board will take, it seems certain that future patent applications covering plants and animals will attract similar levels of controversy.


More on this story

Biotechnology
27 March 2015   An appeals board at the European Patent Office has said that any patent applications covering a “product-by-process” method for developing plants can be granted.

More on this story

Biotechnology
27 March 2015   An appeals board at the European Patent Office has said that any patent applications covering a “product-by-process” method for developing plants can be granted.