Fellow Kat David posted last week on the recent pair of Board of Appeal decisions G2/12 Tomatoes II and G3/12 Broccoli II (still not available in the online list of G decisions, but the previous post has links to the corresponding pdf documents). These related to the exception to patentability in the second part (shown in bold) of Article 53(b) EPC that:
European patents shall not be granted in respect of:
plant or animal varieties or essentially biological processes for the production of plants or animals; this provision shall not apply to microbiological processes or the products thereof;
The two decisions have confirmed that the exclusion of essentially biological processes for the production of plants in Article 53(b) EPC does not preclude the grant of a product claim directed to the corresponding plant or plant material. Thus, if an invention consists of a biological process excluded under Article 53(b) EPC, the product of that process can still be patented, provided that:
(a) claim language can be found to define it (including the possibility of product-by-process claim language where appropriate), and
(b) the claimed plant or plant material is novel and inventive in the usual manner.
It is also necessary that the claim does not fall under the exclusion of plant varieties that is also in Article 53(b) (first part of clause), but according to decision G1/98:
A claim wherein specific plant varieties are not individually claimed is not excluded from patentability under Article 53(b), EPC even though it may embrace plant varieties.
The outcome is therefore that if an invention lies in an essentially biological processes for the production of plants, patent protection will only be entirely precluded if the product is not novel or inventive, or if the product is a plant variety as such.
Noteworthy points that stuck this Kat when reading the decisions (whose substantive contents are the same and both decisions refer to both referrals) were:
1) All of the parties, and the President, actually argued for basically the same outcome: the President, both patent proprietors and both opponents in the Broccoli case (the single opponent in the Tomato case having withdrawn their appeal) urged essentially the answers to the questions that were what the EBA did in the end finally decide. With so many involved parties, it appears somewhat surprising that there was so much agreement on this. Presumably the opponents had their eye on wider issues than just the case in front of them.
2) The EBA insisted that “there is no general notion of an obligatorily restrictive construction of exceptions to patentability”, but then stated that “such a narrow interpretation might well result from applying the general principles of interpretation to a specific provision with regard to specific legal and factual circumstances.” The EBA then indeed went on to interpret Art 53(b) narrowly.
3) The narrow interpretation of Art 53(b) was held to be deducible from:
a) the place of Art 53(b) among exceptions to patentability in its context within Chapter I of Part II of the EPC
b) reference by analogy to rule 27(b) EPC, which stipulates that biotechnological inventions relating to plants are patentable if the technical feasibility of the invention is not confined to a particular plant variety.
G2/07 and G1/08 (the earlier Broccoli and Tomato cases), “the systematic context of the exclusion of essentially biological processes from patentability, namely its place in Article 53(b) EPC, does not as such indicate what the purpose of the provision is”.
5) Subsequent agreement or practice, and historical interpretation, both recognised as methods of interpreting provisions of treaties (such as the EPC), were also not found to assist in interpreting the scope of the exclusion.
6) The EBA insisted that the narrow interpretation of the exclusion that they favoured did not lead to an erosion of the exception, so that “the legislator's intentions could be frustrated by the choice of the claim category and by "skilful" claim drafting”, since the process was still excluded from patentability. The product claim still must satisfy the other criteria for patentability (such as novelty and inventive step).
Having read the decisions, this Kat actually rather wished that he had stuck to the headnote, which pretty much says it all.