A recent EPO Board of Appeal decision has set aside an Examining Division’s decision that claims directed to methods for producing triploid seedless watermelon fruit, and the use of a watermelon plant in a process of producing triploid seedless watermelon fruit, fall under the exclusion to patentability of “essentially biological processes for the production of plants”. 

In February 2003, Syngenta Participations, a Swiss agribusiness, applied for a European patent directed to a production process for seedless watermelon fruit. An EPO Examining Division subsequently refused the application on the grounds that the claimed subject matter was an essentially biological process for the production of plants, which is excluded from patentability under Article 53(b) EPC. 

That decision was appealed, and decision T1729/06 has now issued, setting aside the Examining Division’s decision and remitting the patent application for prosecution.

The appeal case essentially focused on how the exclusion from patentability of “essentially biological processes for the production of plants” in Article 53(b) EPC is to be interpreted. To do this, the Board considered: (a) the decision of the Enlarged Board of Appeal in G2/07 and G1/08 (the “Broccoli” and “Tomato” cases) and (b) the legislative history of Article 53(b) EPC.

First, in G2/07 and G1/08, it was concluded that, “A non-microbiological process for the production of plants which contains or consists of the steps of sexually crossing the whole genomes of plants and of subsequently selecting plants is in principle excluded from patentability as being "essentially biological" within the meaning of Article 53(b) EPC.” (headnote 1). 

However, in the present decision, the Board emphasised that “the Enlarged Board of Appeal has not, in these decisions, given a comprehensive and exhaustive definition of the subject-matter to which the process exclusion in Article 53(b) EPC applies in relation to plant inventions”

Therefore, further interpretation of Article 53(b) was required before a decision on the patentability of Syngenta’s claimed subject matter could be reached. The application had claims directed to both methods for producing triploid seedless watermelon fruit, and also the use of diploid watermelon plants in a process of producing triploid seedless watermelon fruit. The actual production method involved the planting and growing of triploid and diploid watermelon plants, the pollination of the triploid female flowers by the diploid pollen and the development of the seedless watermelon fruit on the triploid plant.

As Syngenta’s claimed use and methods were aimed at the production of triploid seedless watermelon fruit on existing triploid watermelon plants and did not result in the creation of any genetic make-up of plants produced as a result of meiosis, the Board concluded that the claimed use and methods were not “essentially biological processes for the production of plants” as per the G2/07 and G1/08 decisions and therefore were not excluded from patentability.

The Board also confirmed that the fruit resulting from the claimed uses and methods was “biological material” pursuant to Rule 26(2) EPC and, therefore, was not explicitly and a priori excluded from being a patentable invention under the EPC. 

Second, on consideration of the object and purpose of Article 53(b) and the historical documentation on the drafting of the legislation, the Board concluded that the legislator did not have the intention to exclude from patentability a whole “class” of inventions i.e. horticultural or agricultural processes, under which Syngenta’s claimed use and methods were deemed to fall. Instead, the intention was to exclude conventional breeding methods for the production of plant varieties because protection for plant variety rights was available under the UPOV Convention. Therefore, the Board found no indication that the claimed use and methods were intended to be covered by Article 53(b). 

One question that remains outstanding after this decision and the G2/07 and G1/08 decisions relates to the patentability of plants that are obtained by means of an essentially biological process. Further clarification of this question is expected from cases G2/12 and G2/13 (the “Tomato II” and “Broccoli II” cases) which are currently pending before the Enlarged Board of Appeal.