The Enlarged Board of Appeal of the European Patent Office (the Board) handed down a decision on 25 March 2015 which clarifies the extent to which plants and plant materials may be excluded from patentability.  The decision is good news for the agricultural industry, as it confirms that plants and plant material (other than plant varieties) are eligible for patent protection under current European law, irrespective of the manner in which they are, or could be, produced.

What is excluded from patentability in Europe?

The question of law that was referred to the Board relates to Article 53(b) EPC, which states that European patents shall not be granted for, inter alia:

(b)      plant or animal varieties or essentially biological processes for the production of plants or animals;…

The Board was asked to consider whether this provision would exclude from patentability a product or product-by-process claim that is directed to a plant or plant material (other than a plant variety) that is, or could only have been, produced through an “essentially biological process” (e.g., plant breeding).   

Noting that the exclusion to patentability under Article 53(b) EPC, insofar as it relates to an essentially biological process, is clearly directed to a process (not to a product), the Board held that it does not extend to plants or plant material (other than plant varieties), even if the plant or plant material could only have been produced by an essentially biological process:

The exclusion of essentially biological processes for the production of plants in Article 53(b) EPC does not have a negative effect on allowability of a product claim directed to plants or plant material such as plant parts.

The Board also considered an issue that was raised in various amici curiae briefs it received in this proceeding; that is, whether or not the grant of a patent to a plant or plant material that is produced by an essentially biological process (other than a plant variety) would render meaningless the exclusion to patentability of “essentially biological processes” under Article 53(b) EPC.  This issue arose because protection conferred by a process claim extends to products that are directly obtained by the process.

Noting that there is a need to distinguish between aspects of patentability on the one hand and the protective effects of European patent law on the other, the Board concluded that:

…whether a product claim or a product-by-process claim is patentable is to be examined irrespective of the extent of protection that is conferred by it after grant.

How does this decision affect inventors or business owners?

This decision is significant in its interpretation of the exclusionary aspects of the Article 53(b) EPC and confirms that plants and plant material (other than plant varieties) are patentable in Europe, irrespective of the method by which they are, or could be, produced.