The patentability of plants has been the subject of much discussion in Europe in recent years, following decisions by the Enlarged Board of Appeal in the “Broccoli” and “Tomatoes” cases. Those decisions (G2/07 and G1/08) related to the provision of the European Patent Convention which excludes “essentially biological processes for the production of plants and animals” from patent protection (Article 53(b) EPC). The Enlarged Board clarified that “essentially biological processes” were those that contained or consisted of the steps of sexually crossing the whole genomes of plants and subsequently selecting plants, so methods that involved these steps were not patentable. The Enlarged Board did state that methods in which a gene or trait is inserted into the genome by genetic engineering are not “essentially biological process” and are therefore patentable. However, so called “SMART” breeding methods (Selection with Markers and Advanced Reproduction Technologies) using genetic markers such as SNPs are excluded from patentability.

In both the Broccoli and Tomatoes cases, the claims to methods of producing improved plants (using SNP based selection, or through selection by extending the time in which fruit was left on the plate) were considered to relate to unpatentable subject matter. However, the cases were referred back to the Enlarged Board (as G2/12 and G2/13, or Broccoli II and Tomatoes II), because they also included claims to the plant products of these methods (i.e. product claims, rather than method claims). The earlier decisions only related to essentially biological processes, and did not consider whether the products of essentially biological process, i.e. plants produced by crossing and selection methods, were also excluded. The oral hearing was held in October 2014, and we are waiting for the decision to be published.

In the meantime, another plant patent has been the subject of an Appeal at the EPO. Decision T1729/06 related to a Syngenta patent for seedless watermelons. The patent had claims to a method for producing seedless watermelons by using diploid watermelon plants as pollenizer plants for triploid watermelon plants, thereby producing lots of seedless fruits on the triploid watermelon plants.

The method related to the production of fruit on existing triploid watermelon plants, and did not lead to the production of new plants with a new genetic makeup. The Board of Appeal concluded that the method was therefore not excluded from patentability, because it was not an essentially biological process for the production of plants, because no plants were produced.

In coming to their decision the Board of Appeal looked back at the historical documentation that was prepared when the European Patent Convention was drafted. They concluded that the legislators never intended for the entire class of horticultural or agricultural inventions to be excluded, only to exclude conventional plant breeding methods for the production of plants for which plant variety protection was available through the UPOV correction (International Union for the Protection of New Varieties of Plants). This decision by the Board of Appeal is not binding on the Enlarged Board of Appeal, so it does not allow us to predict the outcome of the new appeals in Broccoli II and Tomatoes II. However, the Enlarged Board are also likely to try to determine what the legislators had intended when they come to their decision, and may refer to the same documents.