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Tuesday, 31 March 2015

A Kat revisits Broccoli & Tomatoes, part deux - what does it all mean?

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.

Thus, only a claim to a single plant variety is excluded under Art 53(b) (first part of clause), which was not the case in either of the referred situations.

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.

4) Teleological interpretation was ruled out, since, as observed in 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.


Sally Cooper said...

Not a Patent person but struck by the echo of " a computer program as such" in " .... a plant variety as such" : is patentability creeping across the plant world as it's crept across the world of software ?

Lennard van Vliet, Hortis Legal, The Netherlands said...

On Tomato II:
The specialists have failed to realize that the method of breeding leads to new varieties namely single seeds which are grown into one single plant. Each single tomato plant is observed and it does produce tomatoes with reduced fruit water content, then that single plant is taken and reproduced by vegetative means and it becomes a tomato variety, or, in case that single plant is taken and used repeatedly to produce F1 Hybrid seeds, and then that F1 hybrid is also a new variety under the UPOV-Law provided it meets the homogeneity requirements.
Thus the patent encompasses the creation of new varieties by means of an essentially biological process, and no patent should therefore be granted.
With the opening now apparently allowed, any breeder can monopolize one or more NEW characteristics within one or more entire species, as opposed to the plant breeders’ rights protection system, which system only offers protection for one single variety that has the NEW characteristic in question.
I hope that this personal opinion is helpful in the whole evaluation process.

Darren Smyth said...

Dear Sally

I think that the “as such” expression was me trying to describe the effect of the decisions rather than language of the decisions themselves. However, it is correct that the Boards and Enlarged Board of Appeal of the EPO have in general limited the exclusions to patentability to exclude only the precise thing that is stated to be excluded under the law, and have refrained from giving the exclusions an expansive meaning. This is not new, and goes back to, for example, the narrow interpretation of the exclusions of “plant varieties” decided in G1/98 (mentioned in the main blogpost) and “animal varieties” decided in T19/90 (the oncomouse case).

Dear Lennard

I do not believe that it is correct that the “specialists have failed to realize” the facts mentioned in your comment. My understanding is that the Enlarged Board and the parties were fully aware of these facts. According to G1/98, a claim is excluded from patentability only if it relates to an individual plant variety, and not simply because it encompasses plant varieties. The views that you expressed are shared by others, and seem to have been reflected in the amicus curiae briefs. They were however rejected by the Enlarged Board.

Best wishes


Bart van Wezenbeek said...


You are trying to revive the discussion that was basically decided before the EPO by 1) complying with the European biotech directive and 2) the Novartis decisinon (G 1/98).

In these two instances it has been decided that plants (if not restricted to one specific variety) may be patented even although it has been recognized that such a plant may encompass protection for a large number of varieties.

As the current EBoA has argued: it apparently was the decision of the legislator (which was endorsed by the EPC 2000 diplomatic conference because they did not amend Art. 53 b) that the bar to patentability only would apply to the level of a specific variety.

If you want to change the law, you should divert to the legislator and not to the judges that interpret and explain the law. That such an action may be successful can be gauged from the fact that in both the German and the Dutch national patent law products that are obtained from essential biological methods )e.g. crossing) are exempted from patentability.

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