For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Friday, 10 December 2010

Broccoli (G 2/07) and Tomatoes (G 1/08): the decision is in

The IPKat reported in a post dated 11 June 2007 of a referral having been made to the EPO Enlarged Board of Appeal (G 2/07) on the subject of whether a process involving crossing and selection of broccoli could be patentable. Another referral was then made relating to a similar type of invention relating to crossing and selection of tomatoes (G 1/08). Now, after a mere three and a half years the Enlarged Board, having combined the two referrals, have issued decisions relating to both.

The questions raised in respect of the broccoli referral were:

1. Does a non-microbiological process for the production of plants which contains the steps of crossing and selecting plants escape the exclusion of Article 53(b) EPC merely because it contains, as a further step or as part of any of the steps of crossing and selection, an additional feature of a technical nature?

2. If question 1 is answered in the negative, what are the relevant criteria for distinguishing non-microbiological plant production processes excluded from patent protection under Article 53(b) EPC from non-excluded ones? In particular, is it relevant where the essence of the claimed invention lies and/or whether the additional feature of a technical nature contributes something to the claimed invention beyond a trivial level?
The questions raised in respect of the tomatoes referral were:
1. Does a non-microbiological process for the production of plants consisting of steps of crossing and selecting plants fall under the exclusion of Article 53(b) EPC only if these steps reflect and correspond to phenomena which could occur in nature without human intervention?

2. If question 1 is answered in the negative, does a non-microbiological process for the production of plants consisting of steps of crossing and selecting plants escape the exclusion of Article 53(b) EPC merely because it contains, as part of any of the steps of crossing and selection, an additional feature of a technical nature?

3. If question 2 is answered in the negative, what are the relevant criteria for distinguishing non-microbiological plant production processes excluded from patent protection under Article 53(b) EPC from non-excluded ones? In particular, is it relevant where the essence of the claimed invention lies and/or whether the additional feature of a technical nature contributes something to the claimed invention beyond a trivial level?
The Enlarged Board has, in both decisions G 2/07 and G 1/08, answered the questions as follows:
1. 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.

2. Such a process does not escape the exclusion of Article 53(b) EPC merely because it contains, as a further step or as part of any of the steps of crossing and selection, a step of a technical nature which serves to enable or assist the performance of the steps of sexually crossing the whole genomes of plants or of subsequently selecting plants.

3. If, however, such a process contains within the steps of sexually crossing and selecting an additional step of a technical nature, which step by itself introduces a trait into the genome or modifies a trait in the genome of the plant produced, so that the introduction or modification of that trait is not the result of the mixing of the genes of the plants chosen for sexual crossing, then the process is not excluded from patentability under Article 53(b) EPC.

4. In the context of examining whether such a process is excluded from patentability as being "essentially biological" within the meaning of Article 53(b) EPC, it is not relevant whether a step of a technical nature is a new or known measure, whether it is trivial or a fundamental alteration of a known process, whether it does or could occur in nature or whether the essence of the invention lies in it.
There is, of course, much reasoning behind the answers, some of which has already been analysed by the prolific Oliver G. Randl in some detail here. I am tempted, as many others might be, to make comparisons with case law on the 'non-inventions' of Article 52(2) and (3) EPC, particularly by the liberal use of the meaning-free word 'technical' in these decisions. However, other than an apparent surface similarity, the comparison does not seem to bear close scrutiny and is probably not much help, if not misleading. In answering the questions, the Enlarged Board seem to me to be indicating that they are not establishing the same kind of 'technical effect' reasoning that is now well-established in the case law relating to Article 52(2). Instead, the use of the word technical in this case appears to be more about whether there is enough of a deliberate intervention in the crossing and selection process for there to be a new result. I wonder whether a known type of technical intervention would do just as well as a new one, provided the result of the process was new and inventive.

As for the significance of the decisions otherwise I will refrain from commenting further, mainly because cats don't like vegetables.

More on the decisions from the EPO here.

4 comments:

Anonymous said...

Hastily, isn't "technical effect" for Art 56 and isn't it "technical character" for Art 52?

Anonymous said...

The IPKat's usual complaining about the perceived meaninglessness of "technical" is getting quite stale, and is especially out of place when discussing this decision, which explicitly equates "technical" to the utilisation of controllable forces of nature to achieve a causal, perceivable result.

Norman said...

I thought it was fairly clear that the decisions in these referrals did not turn on the meaning of “technical,” or whether the claimed subject-matter had a “technical character,” as those are questions for Art 52, and the exclusions under Art 53(b) apply even to inventions that do embody a technical teaching and so would otherwise be patentable: 6.4.2.1. The question for Art 53 is whether the subject-matter is “essentially biological,” and this is not just a restatement of the “technical character” question. it does not The Board did not quite say so directly, but it is my impression that the Board was of the view that the subject-matter in issue had sufficient technical character to qualify as invention – that is “classical” crossing and selection are technical, so long as they are reproducible.

The definition of “technical” from the “Red Dove” decision of the BGH, approved by the EBA in this referral, bears an interesting similarity to the definition of patentable product in the watershed decision of the common law world from the High Court of Australia in NRDC. Compare “technical” as meaning "a teaching to methodically utilize controllable natural forces to achieve a causal, perceivable result," with “product” as meaning “an artificially created state of affairs, discernible by observing [real world results].” It will be interesting to see if this definition has any impact on decisions under Art 52, given that it was not directly relevant to the Broccoli / Tomatoes decision. I think it may be too soon to say that the EPO now has a clear definition of “technical” given that the EBA in G 3/08 expressly declined to provide any such definition (at 9.2). I note that there was no overlap in the composition of the Boards, apart from the chairman.

Another interesting point was the scathing assessment of the drafting of Art 53 and Rule 25(5), which to my mind echoes Justine Pila’s assessment of Art 52. The Board said that Rule 25(5) is so “unclear and contradictory” that “the contradiction between the terms of the provision cannot be further clarified,” and consequently it “does not give any useful guidance on how to interpret” Art 53(b). “[N]o real explanation can be derived from the preparatory documents as to why the initial terms "plant variety" or "plant species" were eventually replaced by the term "plants" [in Art 53(b)].” “Any attempt to determine a reliable literal meaning for the term "essentially biological" process appears futile.” The process as a whole must have a “biological essence” – “whatever that may mean precisely.”

jc said...

The sting in the tail seems to lie in the two paragraphs before the order - if a genetic engineering process the claim can't cover subsequent sexual crossing and selection and if a sexual selection and crossing process the claim can't cover downstream routine reproduction - this affects the coverage for direct products of the claimed process. Also see section 2.5 - there is no legitimate expectation, i.e. many granted claims may now be invalid.

Subscribe to the IPKat's posts by email here

Just pop your email address into the box and click 'Subscribe':