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The Enlarged Board of Appeal of the European Patent Office has issued the second decisions in the so-called Broccoli and Tomato cases. Albrecht von Menges of Uexküll & Stolberg examines the decisions and their implications.
In March 2015 the Enlarged Board of Appeal of the European Patent Office (EPO) issued the second decisions in the so-called Broccoli and Tomato cases (G2/13 and G2/12). The two decisions are largely identical and clarify that the EPO can continue to grant patents containing product claims directed to plants and plant material other than a plant variety.
Article 53(b) of the European Patent Convention (EPC) excludes plants and essentially biological processes for the production of plants from patentability. Since the late 1980s the boards of appeal of the EPO have issued a number of decisions interpreting the scope of this exclusion (eg, T320/87, T356/93 and G1/98). While each case appeared to provide an answer for the specific question at issue, new questions on the interpretation of the exclusion continued to emerge.
This development reached a peak with the first decisions issued by the enlarged board for the Broccoli and the Tomato cases (G2/07 andG1/08). In the first series of cases, the enlarged board had to interpret the process exclusion of article 53(b) EPC in view of claims directed to processes for the production of plants. In G2/07 and G1/08 it was concluded that processes for the production of plants characterised by crossing whole genomes of plants and selecting plants are essentially biological and excluded from patentability under article 53(b) EPC, even if the processes are further characterised by a step of a technical nature that serves to enable or assist the performance of the steps of crossing and selection.
Not even the Technical Board of Appeal, which referred questions in the cases G2/07 and G1/08, was confident that all consequences of the broad interpretation of the process exclusion as provided by the enlarged board could be derived from the decisions that had been issued. The technical board referred further questions about a potential effect of the process exclusion on plant product claims to the enlarged board.
In the decisions G2/13 and G2/12 the enlarged board concluded that the process exclusion cannot have a negative effect on allowing plant product claims. The enlarged board also applied this conclusion to cases where the plant is characterised in the claim by an essentially biological process and to cases where the plant is obtainable at the filing date only by an essentially biological process.
It can therefore be expected that these decisions will terminate the discussion on the scope of the exclusion provision of article 53(b) EPC and that the EPO will grant patents for the following types of claims for plant related inventions—provided that the claimed subject matter meets the further requirements of the EPC (ie, novel, inventive and sufficiently disclosed):
• Claims directed to plants or plant products other than a plant variety characterised by structural features (eg, concentration of plant metabolites, such as fatty acids or carbohydrates, presence of nucleotide sequences, etc);
• Claims directed to plants or plant products other than a plant variety characterised by essentially biological processes for the production of plants (characterised by steps of crossing and selection) and/or by essentially technical processes for the production of plants (characterised by transformation of plant cells and regeneration of plants); and
• Claims directed to essentially technical processes for the production of plants or plant parts (characterised by transformation of plant cells and regeneration of plants).
On the contrary, the following types of claims will not be considered patentable by the EPO, independent from the question of whether they meet the further requirements of the EPC:
• Claims directed to a single plant variety; and
• Claims directed to essentially biological processes for the production of plants (characterised by steps of crossing and selection).
At first sight it appears difficult to understand why the enlarged board came to the conclusion that the process exclusion of article 53(b) EPC should be interpreted broadly and the product exclusion of article 53(b) EPC should be interpreted narrowly. However, reading the series of decisions issued by the enlarged board (G1/98, G2/07, G1/08, G2/12 and G2/13) in context makes it clear that the enlarged board focused on the literal wording of the process and the product exclusion of article 53(b) EPC. The different scope of the exclusion provisions therefore simply reflects the different wording provided in the EPC for these exclusions.
Albrecht von Menges is a partner at Uexküll & Stolberg. He heads the biotech team and advises German and international clients on patent cases related to life sciences, biotechnology and pharmaceuticals. He represented the patentee in the Broccoli cases G2/13 and G2/07. He can be contacted at: firstname.lastname@example.org
EPO, plant, biotechnology, plant variety, EPC, patent,