Tomato and Broccoli: patenting plant products

On October 27, 2014, the European Patent Office’s (EPO) Enlarged Board of Appeal held oral proceedings in the consolidated cases of Tomato II and Broccoli II (G2/12 and G2/13). The board considered questions of law, referred by the same technical board of appeal in both cases, in what may well be the two longest appeals in the EPO’s history, pending since the mid 2000s.

Both appeals concern the patentability of plants, plant material and the processes for producing plants, specifically tomato plants and their fruits, and broccoli plants. What makes these two appeals unique is not only the widespread public attention they have drawn (attracting protests involving a giant inflatable tomato outside the EPO’s headquarters), but also that this is the second time the competent technical board of appeal has referred questions of law to the Enlarged Board.

At the heart of the legal debate is article 53(b) of the European Patent Convention (EPC), which 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 seemingly clear exclusion relates to products, namely plant and animal varieties, and to processes, namely those that are essentially biological.

In the cases’ first referrals (G 1/08 and G 2/07), the Enlarged Board held that any non-microbiological process for producing plants containing or consisting of the steps of sexually crossing the whole genomes of plants, and of subsequently selecting plants, is in principle excluded under article 53(b), EPC as an “essentially biological” process. For the exclusion to apply, it does not matter whether another step of a technical nature was present, eg, a genetic marker for selection purposes. One might have thought that this ruling closed the debate on article 53(b), EPC.

However, following the first round of the Tomato and Broccoli decisions by the Enlarged Board in G 1/08 and G 2/07, the following question arose. Are products generated by an essentially biological process, whether in the form of a product-by-process claim or a regular product claim, to fall under the exclusion because they were generated by an essentially biological process excluded from patentability? The competent technical board again thought it necessary to refer this question to the Enlarged Board.

On October 27, 2014, roughly eight years into the appeal proceedings, final arguments (we hope) on the matter were heard by the Enlarged Board in Munich. We observed these proceedings.

‘Processes and nothing more’

As expected, the Enlarged Board did not render a decision at the end of the oral proceedings or issue a preliminary opinion. Instead, as far as a preliminary opinion was concerned the board merely referred to its written comments provided in advance of the proceedings. We have summarised some of the arguments presented before and during oral proceedings.

Based plainly on the wording of article 53(b), EPC, it was argued that the exclusion of essentially biological processes for producing plants should be interpreted to merely refer to processes and nothing more. An extension to products would be against the law and would also violate the first clause of the provision, which in fact is explicitly directed to products (plant varieties).

On the other hand, there was a central argument for a broader interpretation of the process exclusion to include products derived from an excluded process. This was that allowing products generated by an essentially biological process would render the process exclusion clause completely ineffective. As the technical board said in its second decision in T 1242/06, it would “frustrate the legislative purpose”.

During oral proceedings, this notion of rendering the exclusion process irrelevant became particularly noticeable. The Enlarged Board asked the EPO representative whether she could think of any situation where the applicant, when faced with an objection under the process clause of article 53(b), could not simply escape this objection by reformulating the claim as a product claim. She answered no.

Regarding the legislative purpose of article 53(b), EPC, it was argued that the legislator’s intent was merely to prevent double protection under both the EPC and plant breeder’s rights legislation. A product exclusion limited to plant varieties would be sufficient to comply with this intent and would not necessitate a broadening to all products derived from essentially biological processes.

Rule 27(b), EPC would also support this position. This rule generally states that plants are patentable subject matter if the technical feasibility of the invention is not confined to a particular variety. In contrast, the technical board, in its second decision in T 1242/06, held that rule 27(b), EPC would not limit the applicability of the process clause of article 53(b), EPC to products.

Further, it was repeatedly argued—and is a generally accepted rule of interpretation—that exclusion provisions should be interpreted in a narrow fashion. Following this reasoning, article 53(b), EPC should be taken at face value: excluding only plant varieties and essentially biological processes, not any product generated by such a process.

The parties also repeatedly invoked another general principle of European patent law—the strict separation of subject matter and scope of protection. It was argued that excluding products generated by essentially biological processes, because the product claim also affords protection against third parties carrying out the essentially biological process, would violate this established separation. The question of patentability should be exclusively assessed on the basis of the claimed subject matter, ie, the technical features of the claims.

In this context, however, it is important to remember that there are other cases of products falling under process exclusions. For example, a claim to a stem cell that may only be produced by a process that destroys a human embryo at any point in time is excluded from patentability under rule 28(c), EPC. This rule essentially states that uses of human embryos for industrial or commercial purposes are excluded from patentability. Therefore, in this case, the stem cell product conflicts with the process exclusion of rule 28(c), EPC. Of course, rule 28(c) and article 53(b), EPC serve different purposes, but the Enlarged Board might draw on this case law as precedent.

We must await the final decision of the Enlarged Board and hope that it will at least bring legal certainty to patentees and unfreeze the pending appeals that have been stayed in light of the present referrals. But even once the board has made its final decision, applicants ought to be aware of national laws that might differ from the EPC, such as the German Patent Act, which has been recently amended to explicitly exclude products generated by essentially biological processes.

Franz-Josef Zimmer is a partner at Grünecker. He can be contacted at: zimmer@grunecker.de

Markus Grammel is a patent attorney trainee at Grünecker. He can be contacted at: grammel@grunecker.de