A common dilemma amongst plant breeders is how to protect their new plant variety. In general, there are two ways to do this – by patent or by plant variety protection.

New varieties of plants can be created by genetic engineering. Can such new varieties be protected by patents? The plant varieties, though produced by genetic engineering means, cannot be protected under the Patents Act as it is expressly excluded. However, the process of genetic engineering may qualify for a patent if the process satisfies the patentability criteria. But the plant breeder is not a lab technologist and he would not be interested in just protecting the micro-biological process. The plant breeder’s interest is more in the commercial value of the new plant variety for which the breeder can obtain exclusive rights to the plant and harvestable material of the plant such as fruits, plant juice (sap), wood, flowers, and etc. under the New Plant Varieties Act.

What this means is that natural processes, such as methods of cross-breeding, and the resulting plant varieties cannot be patented but may be eligible for protection under the New Plant Varieties Act.

However, recent court proceedings of European Patent No. 1211926 (referred to as the “Tomato” case) have proved otherwise. Briefly, the original claims of this patent were directed to a method for breeding tomato plants that yield tomatoes having reduced water content by means of cross-breeding. This patent was opposed by Unilever PLC for having method claims directed to an essentially biological process for the production of plants and animals. Such method for production is a non-patentable subject matter under the Article 53(b) of European Patent Convention (EPC).

The patentee, the Ministry of Agriculture of Israel, responded to the opposition by filing two subsequent appeals at the Enlarged Board of Appeal (EBA) in Europe.

In the court proceeding for the first appeal (Tomato I), the patent claims which were directed to the method of cross-breeding of a tomato plant were discussed. The Appeal Court ruled against the patentee as breeding methods, including sexual crossings of the plants and subsequent selection from the breeding, are excluded from patentability. Cross-breeding methods were defined as “essentially biological processes”, which is a non-patentable subject matter in Europe.

The patentee made a second appeal before the Appeal Court (Tomato II) by amending the patent claims to a plant product obtained from a method of cross-breeding. This type of claim is referred as product-by-process claim, wherein the claim is directed to a product produced by a specific process instead of the process itself.

The Court considered many aspects when handing out the decision for “Tomato II”. In conclusion, it was decided that such product-by-process claims would not be excluded as plant varieties under the subject-matter of the claims are not limited or directed to a plant variety.

Further to that, the Appeal Court established that the term “essentially biological processes” must be interpreted narrowly and not to be extended to a product claim which is directly obtained from breeding process.

The point to be taken from this case is that there are various ways a patent claim can be constructed. Cross-breeding methods still remain unpatentable in Europe and in other jurisdictions. Yet, this case has opened up new possibilities of obtaining patents for new plant varieties by claiming a product of a cross-breeding instead of the cross-breeding method or the plant itself.

What if similar situation occurs in Malaysia? As noted above, Malaysia deems plant or animal varieties or essentially biological processes for the production of plants or animals to be non-patentable. It will be interesting to see how this provision is interpreted if a case similar to the “Tomato” case is discussed in the Malaysian court. For now, plant variety protection seems to be a better option for cross-breeders to obtain protection of their new plant varieties.

* first published in the August 2015 issue of The Petri Dish (www.bic.org.my/the-petri-dish)