In the area of plant breeding and genetic engineering, plants, parts or products thereof are patentable under the European Patent Convention (EPC) as long as the feasibility of the invention is not restricted to a particular plant variety. Plant varieties on the other hand are specifically excluded from patentability (Art. 53(b) and Rule 27(b) EPC) and protectable through plant breeders rights. Art 53(b) EPC also prohibits claims directed to an essentially biological process for the production of plants (see also Broccoli I G2/07 and Tomato I G1/08). But does this exclusion of process claims impact on the allowability of plants that are produced by such a process? This was the fundamental question the Enlarged Board of Appeal (EBA) at the European Patent Office (EPO) answered in the consolidated proceedings in Broccoli II (G2/13) and Tomato II (G2/12).
 
In both cases, the EBA provided answers on several similar points of law referred to it separately by two Technical Boards of Appeal (T1242/06 (G2/12) and T83/05 (G2/13)). The questions were analysed in consolidated proceedings.
 
The “tomato patent” and questions referred to the EBA
 
The “tomato patent” (EP1211926) in the name of the State of Israel Ministry of Agriculture was directed to a tomato fruit having reduced water content. The patent described the production of the fruit based on a biological process. Three questions were referred to the EBA by the Technical Board:
 

  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?
  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?
  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?

 
The “broccoli patent” questions referred to the EBA
 
The “broccoli patent” (EP1069819) in the name of Plant Bioscience Limited concerned brassica plants with increased levels of anticarcinogenic glucosinolates. The patent described the production of the plants based on a biological process. The four specific questions referred to the EBA by the Technical Board were 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?
  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?

(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? 

  1. 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?
  2. 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?

The EBA’s ruling
 
The EBA analysed these questions in consolidated proceedings. The Board clarified that the exclusion of essentially biological processes from patentability is interpreted narrowly and does therefore not have a negative impact on the allowability of a product claim directed to plants or plant material such as plant parts produced by the process. This applies to product claims and product-by-process claims. The finding is in line with earlier decisions by the EBA which applied a narrow interpretation to exclusions from patentablity (G1/04, G2/06). The EBA also clarified that it was immaterial that the only method available at the filing date of the patent for generating the plants or plant material was an essentially biological process. The EBA further answered the question by the referring Technical Boards whether it was of relevance that the protection conferred by the product claims encompassed the generation of the claimed product by means of an essentially biological process. This question also featured in numerous amicus curiae briefs filed by third parties, including farmers associations and private individuals. The EBA found that whether a product claim or product-by-process claim is patentable is to be examined irrespective of the extent of protection that it confers after grant. It also stated that it had to be borne in mind that the role of the EBA is to interpret the EPC and that it is not mandated to engage in legislative policy. It therefore concluded that it is of no relevance that the protection conferred by the product claims encompassed the generation of the claimed product by means of an essentially biological process.
 
The EBA’s ruling provides much needed clarification on the allowability of claims directed to plants and plant products. This is good news for the biotechnology sector and Applicants wishing to protect innovation in plant breeding and agriculture.
 
The decisions can be obtained from the EPO website:
http://www.epo.org/law-practice/case-law-appeals/eba/number.html