The EPO Enlarged Board of Appeal (EBA) has now issued a decision for the second referrals in the Broccoli and Tomato cases (G2/12 and G2/13).
Both of the first and second referrals relate to the exclusion from patentability under Article 53(b) EPC of “plant or animal varieties or essentially biological processes for the production of plants or animals”.
In the first referral to the EBA (G2/07 and G1/08), the EBA ruled that a method of breeding and selecting of plants is only patentable if it involves “a technical step that by itself introduces a trait into the genome or modifies a trait in the genome of the plant produced”.
In light of the decision from the EBA, the Technical Board of Appeal (TBA) dismissed the method claims of the two applications. However, the TBA found that it was unable to dispose of the product claims to the plants themselves and the product-of-process claims in the Broccoli application. New referrals to the EBA were made (G2/12 and G2/13) and, again, the referrals were consolidated due to the similarities of the points of law.
In the decision, the EBA concluded:
1) The “biological processes” exclusion in Article 53(b) EPC does not detract from the allowability of a product claim directed to plants or plant material (such as a fruit).
2) In particular, the fact that the only method available at the filing date for generating the claimed subject-matter is an essentially biological process does not render unallowable a claim directed to plants or plant material other than a plant variety.
3) It does not matter that the protection conferred by the product claim encompasses generation of the claimed product by means of an essentially biological process for the production of plants (i.e. breeding) excluded as such under Article 53(b) EPC.
Regarding the product-by-process claims of the Broccoli application, the EBA concluded:
4) The fact that the process features of a product-by-process claim directed to plants or plant material define an essentially biological process for the production of plants does not render the claim unallowable.
In conclusion, the EBA ruled that plants or plant materials could be patented despite the fact that the method used to create the plants or plant materials was excluded subject matter under Article 53(b) EPC.
This has been a very drawn-out case. The Board of Appeal appeared most reluctant to believe that a plant would be patentable, which is why it twice referred the case up to the Enlarged Board of Appeal (see the article in our Autumn 2013 edition of Patent Issues “More Broccoli and Tomatoes, and Elephants in the Courtroom” at: http://www.jenkins.eu/news-and-publications/archive/patent-issues-autumn-2013/).
This decision has already proven controversial, with some arguing that it will unduly favour large agrochemical companies.