EPO approves patents in Tomato II and Broccoli II cases

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

The decision,  handed down by the EPO’s Enlarged Board of Appeal yesterday (March 26), centred on the combined Tomato II and Broccoli II cases.

Both cases can be traced back to patent applications covering tomatoes and broccoli, which the EPO had granted to Israel’s Ministry of Agriculture and biotechology company Plant Bioscience Limited (PBL) respectively.

Unilever opposed the tomato application, while agribusiness Syngenta challenged the broccoli application.

In 2010, the ministry and PBL both had their patent applications denied by the Enlarged Board.

The patents, to which cases G2/07 (Broccoli I) and G1/08 (Tomato I) centred on, were rejected under article 53(b) of the European Patent Convention (EPC). Article 53(b) of the EPC restricts applicants from obtaining patents for claims that cover an “essentially biological process”.

Plant Bioscience returned to the EPO with similar claims for the products broccoli, but its application defined the final product by the method it was created, known as "product-by-process". The ministry returned with "product" claims for its tomato related application.

The Enlarged Board combined both cases and ruled on them together.

The parties that subsequently opposed the applications feared that PBL and the ministry’s new applications would circumvent article 53(b) because they had re-written the original patent applications.

But the Enlarged Board rejected these fears in its decision.

The board stated that a “product-by-process claim directed to an essentially biological process for the production of a plant is not a matter of some sort of ‘skilful claim drafting’ or circumvention of legal hurdles, but a legitimate choice to obtain patent protection for the claimed subject matter”.

It added: "The exclusion of essentially biological processes for the production of plants in article 53(b) EPC does not have a negative effect on the allowability of a product claim directed to plants or plant material such as plant parts."

Jan Chojecki, managing director at PBL, told LSIPR that he was “delighted” with the decision.

“It brings clarity to a grey area of the law and it will hopefully encourage further investment in the life sciences sector,” he added.

The case will now return to the EPO’s Technical Board of Appeal, from which the latest case was referred.

The case has proven controversial and attracted criticism from parties such as non-profit group No Patents on Seeds. In October, the organisation protested outside the EPO during the oral proceedings of the case.

In a statement issued today (March 27), Christoph Then, a member of No Patents on Seeds, said: “The EPO has paved the way for companies to take control of resources we all need for our daily lives.

“No company should hold monopolies on sunlight, air or water. The same is true for the resources needed for food production,” he added.

But Thomas Leonard, partner at Kilburn & Strode, a London-based firm of patent and trademark attorneys, said that the Enlarged Board was only interpreting the rules of the EPC.

He agreed with the decision, which he said was “consistent with the EPO's approach to interpretations of exclusions to patentability under the EPC” and a “welcome clarification” for patent applicants.

He added: “There has been a reluctance from the Enlarged Board to extend exclusions from patentability beyond their originally intended scope. The Enlarged Board set out a detailed case in view of the relevant legal context and saw no justification for broadening the exclusion under article 53(b) EPC to products made by excluded processes.”

Leonard said that he expects more applicants to go down the route of including “product-by-process” claims to products made by processes deemed ineligible for patent protection by the EPO.

Jane Wainwright, partner at law firm Potter Clarkson, said: “This is a sensible decision that should have not been referred to the Enlarged Board.

“The Enlarged Board is right not to extend the exclusivity to patentability. If the exclusion had been extended then it would have potentially excluded very large swathes of plant based research from patentability. Such a wide-ranging exclusion would be prejudicial to the biotech industry,” she added.

WIPR contacted Syngenta, Unilever and Israeli’s Ministry of Agriculture but they had not responded at the time of publication.