Patenting of Plants at the EPO

ARE PLANTS MADE BY ESSENTIALLY BIOLOGICAL PROCESSES PATENTABLE?

The development of plant products and plant production methods has helped enhance the aesthetics of our environment, for example, by producing a new flower, and is part of the effort to try to ensure our food security in an ever more populous world, for example, by improving a food crop yield. Naturally, those who develop useful or beautiful plant products or improved processes for making plant material are keen to protect the fruit of their endeavours. Plant products may be protected by plant variety rights and/or patents. Two recent EPO decisions, “Tomatoes II” (G 2/12) and “Broccoli II” (G 3/12), have helped clarify which types of new plants may be patented.

Background

Article 53(b) of the European Patent Convention (EPC) provides by way of an exception to patentability the following:

“European patents shall not be granted in respect of:

(b) 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;
…”

An earlier EPO decision, G 1/98, clarified that the exception under Article 53(b) EPC does not exclude claims encompassing but not identifying plant varieties. Thus, a claim to a specific plant variety is excluded from patent protection, but a claim relating to multiple plant varieties is not excluded.

The present decisions are the second instalment of a series of cases that seek to clarify the provisions relating to inventions comprising an essentially biological process for the production of plants or animals.

Earlier, “Tomatoes I” (G 1/08) and “Broccoli I” (G 2/07) had clarified that an essentially biological process under Article 53(b) EPC relates to a non-microbiological process for the production of a plant that contains the steps of sexually crossing the whole genomes of plants and of selecting the plants so produced to favour the properties of interest. Further, this exception may not be avoided by including in the process technical means to improve the performance of these steps. However, if an additional step of a technical nature itself directly modifies the genome to confer a property of interest without mixing the genes of the crossed plants, the process is not “essentially biological” and so not excluded from patentability.

Tomatoes II and Broccoli II

Having settled the matter on process claims comprising essentially biological processes, questions remained on the patentability of claims related to products per se that must inevitably be produced by methods consisting of essentially biological processes.

In common with Tomatoes I, Tomatoes II was referred to the Enlarged Board of Appeal of the EPO (EBA) from appeal proceedings following opposition of European Patent No. 1211926, which relates to tomato fruit capable of natural dehydration while on the tomato plant.

Broccoli II, like Broccoli I, was referred EBA from appeal proceedings following opposition of European Patent No. 1069819, which relates to a Brassica plant (the plant family to which broccoli belongs), a part of the plant or a seed of the plant, which has enhanced levels of anticarcinogenic glucosinolates.

In both cases, the plants were produced by selective breeding, and the referrals sought to answer the general question of whether claims to plants per se are patentable if the plants were inevitably produced by essentially biological processes.

Due to the similarity of the issues to be decided in the two cases, the cases were consolidated and heard together.

Decision

The Board decided that the exclusion to essentially biological processes should be interpreted narrowly to relate to process claims not product claims. Thus, plants and plant material, such as fruit or plant parts are not excluded from patentability under Article 53(b) EPC unless the claims relates to a specific plant variety.

The specific questions referred and the related answers in Tomatoes II are as follows:

  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? – No.
  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? – Yes.
  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? – No.

The specific questions referred and the related answers in Broccoli II are as follows:

  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? – No.
  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? – Yes.
    (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? –Yes.
  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? – No.
  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?” – Deemed to not require an answer.

Conclusion

The EPO has clarified its position on product claims to plants and plant material where the product is inevitably made by, or defined in terms of, an essentially biological process. Under significant pressure from both sides of the argument, the EPO has decided that product claims (that do not define a specific plant variety) are outside the scope of the exception to patents for essentially biological processes under Article 53(b) EPC. In other words, claims to plant products per se are acceptable as the prohibition at issue relates to processes only.

If you wish to obtain patent or plant variety protection for your plant product, please contact Schlich Ltd for more details.