In T 915/10, the Examining Division considered the following claim:
“A method for producing a soybean plant tolerant to glyphosate herbicide comprising introducing into the genome of said plant event MON89788.”
The Examining Division held that the claim included as an implicit feature a sexual crossing or selection process and refused the application. On appeal, the applicant filed a new claim:
“A method for producing a soybean plant tolerant to glyphosate herbicide as defined in claim 1, which method comprises introducing SEQ ID NO: 9 into the genome of said plant by transformation of plant cells with heterologous DNA.”
The Board of Appeal held that the method as claimed was limited by the introduction of the introduced trait by a genetic engineering step and that the expression of the inserted DNA was not the result of a plant breeding method. In addition, the Board was satisfied that the method as claimed does not require or define (either explicitly or implicitly) any step(s) of mixing genes of plants by sexual crossing and subsequent selection.
Based on this decision, it seems likely that claims directed to modification of the plant genome will be accepted if the claim language makes it clear that the modification is carried out by genetic engineering rather than conventional plant-breeding techniques. It is therefore worthwhile when drafting such an application to consider including suitable language to form the basis for an amendment when prosecuting the application in Europe.