Monday, December 19, 2016 Broccoli and Tomatoes followup: staying of proceedings due to the Commission Notice on certain articles of Directive 98/44/EC

 

In G 2/12 and G 2/13 (decision, blog), the Enlarged Board of Appeal concluded that 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. The decision led to a successful maintenance in amended form in the Broccoli case (decision, blog, register) as well as in the Tomatoes case (decision, blog, register).
The decision also led to a discussion in the European Commission. On 3 November 2016 ,the European Commission adopted a notice on certain articles of Directive 98/44/EC of the European Parliament and of the Council of 6 July 1998 on the legal protection of biotechnological inventions ("the (Biotech Directive"/ "The Directive"). With regard to the patentability of plants and animals obtained by means of essentially biological processes, the Commission takes the view that in accordance with the EU legislator's intention such plants and animals are not patentable under the Directive.
The effect of the Commission Notice for the EPO's examination practice including any necessary follow-up measures is currently under discussion with the representatives of the member states of the European Patent Organisation.
The President of the EPO has decided that, in view of the potential impact of the Commission Notice, all proceedings before EPO examining and opposition divisions in which the decision depends entirely on the patentability of a plant or animal obtained by an essentially biological process will be stayed ex officio. The details are given in the Notice that is reproduced below, together with parts of the Commission Notice.

Sunday, October 02, 2016 T 1242/06 - Tomatoes III

After two referrals to the EBoA underlying G 1/08 and G 2/12 settling the Art. 53(b) issues relevant for the present case, the Opposition Appeal proceedings regarding the “Tomato” patent have reached their end: The patent is maintained in amended form with two claims relating to the Tomato fruit itself but no claims to the method of their production. The maintained claims are the claims of Auxiliary request I discussed in the below (highlighted in red and bolded). Depositing of the lines used to obtain the claimed Tomato fruit was not found necessary for enablement. The inventive step of the claimed tomato fruit was found to lie in the low expectation of success of the performed selection.

Tuesday, October 06, 2015 T 0083/05 - Broccoli III the final

This decision concerns the patent application directed to a broccoli plant with elevated levels of anticarcinogenic glucosinolate derivatives, that was the result of crossing different known broccoli plants and using genetic markers that indicated elevated levels of such glucosinolate derivatives. It is the final of a long lasting case going through two rounds of Enlarged Board of Appeal decisions: Broccoli I (G2/07) and Broccoli II (G2/13, case law blog: here). See also the Tomatoes I and II decisions that concerned similar issues and that were co-decided by the Enlarged Board. 
In this particular decision (which was named Broccoli III) the Board of Appeal reacts to the ruling of the Enlarged Board in G2/13 and of course adapted to that ruling by finding that the claims directed to 'an edible Brassica plant produced according to a method for the production of Brassica oleracea with... etc.'  fulfills the requirements of the EPC. 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. There is nothing unexpected about this particular decision, but it is important because it generated such important case law.

Smmary of Facts and Submissions

I. Both opponent 01 (appellant I) and opponent 02 (appellant II) filed appeals against the interlocutory decision of the opposition division maintaining European patent No. 1 069 819 in amended form.

II. The appellants submitted that the patent as amended and the invention to which it related did not meet the requirements of the EPC. They relied in particular on the opposition grounds of added subject-matter, lack of enabling disclosure, lack of novelty, lack of inventive step and that the subject-matter of the method claims was not patentable pursuant to Article 53(b) EPC.

III. During the first oral proceedings before this board (albeit in a different composition), the patent proprietor (respondent) submitted a new main and auxiliary request. Claims 1 to 4 of the main request were directed to a method for the production of Brassica oleracea with elevated levels of particular glucosinolates comprising a number of steps of crossing, selecting and backcrossing.

The other claims of the main request were all independent and read as follows:

"5. An edible Brassica plant produced according to the method of any one of claims 1 to 4.

Friday, March 27, 2015 G 2/12 and G 2/13 - Fruit and veggies

On 25 March 2015 the Enlarged Board of Appeal published the consolidated decisions G 2/12 (Tomatoes II) and G 2/13 (Broccoli II). Whereas the EBoA decided in G 1/08 (Tomatoes I) and G 2/07 (Broccoli I) that the processes as claimed in the respective patents at stake were not allowable under Article 53(b) EPC (that indicates that plants and plant varieties or essentially biological processes for the production of plants are unpatentable), the EBoA now came to the (not unexpected) conclusion that this article in the EPC does not prevent patenting the plant products (e.g. fruit and edible parts of the plant) that may be obtained by such processes. Interestingly, all parties involved (patent proprietors, opponents as well as the President of the EPO) agreed with this notion, before the EBoA confirmed it.
The EBoA once again stresses the difference between a product claim, a process claim and a product-by-process claim, the latter being a product claim that should be addressed for patentability separate from the process that is used to produce it.

The EBoA concluded earlier in G 2/07 and G 1/08 that the legislator's intention (Article 53(b) EPC) had been to exclude from patentability those plant breeding processes which were the conventional methods of plant-variety breeding at the time. 
Article 53(b) EPC is about an essentially biological process that cannot be patented. But if one claims a product (not a plant or a plant variety) that may be obtained by such excluded process, such product may very well be patentable and is explicitly not excluded from patentability under Article 53(b) EPC, solely because it was obtained by the unpatentable process.  

Notably, and the EBoA admits this, in some EPC contracting states, including Germany and the Netherlands, the patent law deviates from the EPC by explicitly excluding patentability of products obtained by essentially biological processes (e.g. see Art. 3(1)(d) ROW 1995). The EBoA indicates that such is not the case in the EPC.

Ergo: not all is lost for parties pursuing European patent protection for commercial plant products (like fruit) when the process leading to such products falls under the exclusion of Article 53(b) EPC, at least not in all contracting states of the EPC.