The Enlarged Board has issued decisions on 25 March 2015 on: G 2/12 (Tomatoes II) and G 2/13 (Broccoli II) and, in so doing, has brought welcome certainty back to the world of plant patent protection at the EPO!

Both cases (dealt with in a consolidated hearing) deal with the interpretation of the exclusion from patentability under Article 53(b) EPC for plant or animal varieties or essentially biological processes (but not microbiological processes) for the production of plants.

The key headnotes from both Tomatoes II and Broccoli II are below. There is one additional point inBroccoli II (Headnote 2(a)) dealing with process features of a product-by-process claim.

Tomatoes II and Broccoli II:

  1. The exclusion of essentially biological processes for the production of plants in Article 53(b) EPC does not negatively affect 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 for the production of plants disclosed in the patent application does not render a claim directed to plants or plant material, other than a plant variety, unallowable.
  3. In the circumstances, it is of no relevance that the protection conferred by the product claim encompasses the generation of the claimed product by an essentially biological process for the production of plants that is excluded as such under Article 53(b) EPC.

Broccoli II:

2. (a) The fact that the process features of a product-by-process claim directed to plants or plant material, other than a plant variety, define an essentially biological process for the production of plants does not render the claim unallowable.

Prosecution tip

Subject-matter should be claimed as a product or a product-by-process and not as a process, which, in the case of essentially biological processes for the production of plants, remains excluded from patentability.

Even if the product, i.e. the plant or plant material such as a fruit or plant parts, can only be obtained by essentially biological processes with no other methods either disclosed in the patent application or otherwise known, the process exclusion in Article 53(b) EPC does not extend to product claims and product-by-process claims.

Conclusion

The prosecution of plant patents at the EPO can now resume with these various issues put to bed!