[GuestPost] UPC Hague Local Division says that mushrooms are not plants in granting preliminary injunction

What is a "plant" for the purposes of patent law? The answer depends: in the United States, for example, fungi and macroalgae are considered "plants" under the Plant Patent Act of 1930. The latest answer to this question has come from the Hague Local Division of the Unified Patent Court (UPC) in a case concerning the patentability of mushrooms (i.e. fungi). This Kat is pleased to share a guest contribution from Katfriends Federico Caruso and Dr. Valentina Predazzi (Società Italiana Brevetti) to discuss the UPC's finding that mushrooms are not plants.

Over to Federico and Valentina:

Mushrooms are not plants, UPC decides.

"By an order issued on 31 July 2024 (UPC_CFI_195/2024), the Hague Local Division (LD) of the Unified Patent Court granted a preliminary injunction in favor of Amycel LLC, a developer of mushroom strains. 

This order provided provisional measures sought by Amycel. The order addressed two key issues: a procedural one, concerning whether Amycel acted with an unreasonable delay that could have led the court to reject the request (Article 62 of UPCA and Article 211(4) of the UPC Rules of Procedure), and a substantive one, relating to the patentability of mushrooms.

The Facts

Amycel is the owner of European Patent EP1993350 on the mushroom strain BR06, named 'Heirloom', which is one of the top-selling brown mushrooms worldwide. The 'Heirloom' patent was granted on 29 June 2016.

In 2017, Amycel found that a Polish farmer (whose name is redacted in the order) produced and marketed a mushroom strain named 'Cayene'. Based on phenotypic and genetic analysis, 'Cayene' purportedly infringed the ‘Heirloom’ patent. After months spent in unsuccessful negotiations with the Polish farmer to solve the dispute out of court, Amycel started an infringement action in July 2023 in Poland (not a UPC Contracting Member State).

Shortly after the beginning of the Polish action, Amycel found, in late July 2023, that 'Cayene' strains were also sold in UPC Contracting Member States, including The Netherlands, Germany, France, and Italy. On May 3, 2024, Amycel filed an action with the Hague Local Division of the UPC.

Before starting the UPC action, Amycel conducted additional genetic and phenotypic analyses to gather more detailed evidence on the 'Cayene' strain also to be prepared to rebut to the counter the technical defenses raised by the farmer in Poland. 

With the UPC action, Amycel requested provisional measures, specifically a preliminary injunction against the Polish farmer, based on the commercialization of 'Cayene' in the Netherlands and in the other UPC Contracting Member States.

The Judge Rapporteur granted the defendant time to file a defense brief and set a discussion hearing. The night before the hearing, the Polish farmer filed a revocation action for the ‘Heirloom’ European Patent with the Milan Central Division.

The Assessment of (Lack of) Unreasonable Delay

As to the first issue, the defendant argued that the court should have rejected the request for provisional measures based on the fact that Amycel had waited almost a year after filing the Polish action before commencing the UPC action. However, the UPC dismissed these arguments. The court considered that Amycel had conducted two additional technical analyses that needed several months to be carried out and such assessments were necessary to gather more evidence on the infringement and to rebut the technical defenses raised in the Polish action. The court concluded that, as a result, Amycel did not unreasonably delay the action, and its behavior was neither negligent nor hesitant. 

Additionally, the court dismissed the defendant's argument that the urgency requirement was not met because 'Cayene' had been known in Poland since 2017. The court clarified that commercialization in Poland, outside of the Contracting Member States, was not relevant before the UPC.

The Hague LD's assessment of "unreasonable delay" seems to differ slightly from other Local Divisions (LDs). For example, in the Ballinno case, the Düsseldorf LD ruled that the applicant acted with unreasonable delay because the action was filed eight months after the first warning letter and six months after engaging an expert to assess the infringement (UPC_CFI_151/2024 LD Hamburg Order of June 3, 2024 Ballinno/Uefa). Other UPC LDs have held that the urgency requirement is met because the applicant acted within one month (UPC_CFI 2/2023 LD Munich. Order of 30 April 2024).

Given these circumstances, The Hague LD seemed to have adopted a more "generous" approach to the urgency requirement, taking into account the specific technical field and the need to carry out experimentation activities useful for assessing the infringement and to respond to the technical defenses already raised by the defendant in the Polish proceedings (that could have been expected to be raised also before the UPC).

Substantive Matter for Validity Assessment: Are Mushrooms Plants?

The Polish farmer raised a nullity objection to the 'Heirloom' patent, arguing that mushrooms should be considered plants and, therefore, fall outside patentable matter under Article 53(b) of the European Patent Convention, which excludes "animal and plant varieties" from patentability. The farmer claimed that the UPOV Convention, which allows for the registration of mushroom varieties under plant variety protection, supported this exclusion.

The Hague LD clarified that, according to biological taxonomy, mushrooms are classified in the distinct kingdom Fungi, separate from plants and animals. Therefore, mushrooms are not plants, as they do not belong to the Plantae kingdom. The court specified that exceptions to patentability must be interpreted narrowly and that no such exception exists unless expressly mentioned in the law.

This view is supported by EPO case law, particularly in the Tomato II case (G2/12), where it was stated that the exclusion from patentability provided for in Article 53(b) EPC is "specifically addressed to plant varieties and animal varieties." Additionally, the Hague LD noted that mushrooms have been expressly excluded from the patentability exception by the EPO President’s Proposal CA/56/17, dated June 6, 2017, which clarifies that "plants and animals as well as propagation materials thereof are covered by the exclusion from patentability, but not any plant-or animal derived products like fur or meal, or even other products like fungi or yeast."

Based on this reasoning, the Hague LD ruled that the 'Heirloom' patent does not fall under any patentability exception. Since the patent was considered valid, the court found that 'Cayene' infringed upon it. Therefore, the provisional injunction and other requested measures were granted.

Conclusion

In its decision, the Hague LD paid particular attention to the specific technical and scientific fields involved, both in assessing the urgency requirement and evaluating the nullity argument raised by the defendant. The court recognized that patent owners, to evaluate potential infringement and avoid groundless actions, must often conduct experiments requiring time and resources, such as the propagation of mushroom strains in this case.

Furthermore, the interpretation of the EPC and patent law must align with general scientific knowledge in the relevant sector. In this case, the taxonomy of natural kingdoms played a crucial role and could not be misinterpreted."

We now await the next word on the validity of the patent from the Milan Central Division.