Broccoli and tomatoes: it's "green for stop, red for go!"

Only from the EPO: the Enlarged
SmorgasBoard of Appeal

In the case of traffic lights, the first thing any respectable Kat teaches his kittens is "red for stop, green for go!". However, in the Wonderful World of European Patents, the opposite is the case. Let's explain.

Last December, when many readers were turning their thoughts to turkeys, cranberry sauce, mince pies and other seasonal delights, the IPKat was devoting his attention to broccoli and tomatoes. By way of background, the Kat initially reported in June 2007 of a referral to the European Patent Office (EPO) Enlarged Board of Appeal (in G 2/07) as to whether a process involving the crossing and selection of broccoli could be patentable. A further referral was later made regarding a similar invention relating to the crossing and selection of tomatoes (see G 1/08). Shortly before last Christmas the Enlarged Board issued its decisions.

for the record, the broccoli referral asked:

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 tomatoes referral went a little further:

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?

Argument over the patentability
of the first walking, smiling
tomato continues to rage

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, combining the two, came up with the following formula:

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.

The broccoli ruling is the subject to an appeal for which an oral hearing was fixed for tomorrow. However, a media release from the EPO informs the IPKat that the EPO Technical Board of Appeal dealing with it has cancelled the hearing "in response to recent submissions filed by the parties involved in the case" [What, cries the IPKat! A broccoli patent and no submissions from the Greens?].  The release continues, in relevant part:

The natural constituency
for broccoli patent lobbyists?

"Taking into account the ruling of the Enlarged Board of Appeal of the EPO that methods for the production of plants which comprise conventional breeding steps as well as technical ones are not patentable under the applicable European patent law, the patentee has proposed to limit its original patent by excluding the breeding methods. Thus, only the broccoli plants as such remain protected. The two firms appealing the patent made their request for a public hearing conditional on whether the board decides not to follow the proposal of the patentee. Therefore the board will now issue its reasoned decision in writing. ...

The technical board of appeal competent in "Broccoli" ... consists of two members with a scientific background and a legal expert. ... The boards are independent from the Office in their decisions and are bound only by the European Patent Convention (EPC) [Aren't we all, ponders Merpel ...].

Oral proceedings in procedures at the EPO are governed by the EPC. They may be requested by the parties involved, or appointed by the EPO, to secure the right of the parties to be heard. Oral proceedings are cancelled if they are no longer required. In those cases the procedure is then continued in writing. This policy is routinely applied by all instances before the EPO wherever appropriate in order to ensure efficiency and effectiveness of the grant procedure. The full disclosure of all documents in the EPO's freely accessible European Patent Register ensures timely information of the interested public [The IPKat sincerely hopes that someone from the European Commission is reading this. Words like "full disclosure", "freely accessible" and "timely information of the interested public" must strike fear into the hearts of the Court of Justice of the European Union, which can't even contemplate the scope of a trade mark specification without jealously guarding its precious judicial serenity].  ...

Following [last December's] ruling, which is binding on the EPO and its boards of appeal, the two appeal procedures were resumed. The board responsible for reviewing the patents granted for the broccoli and tomato plants must now decide whether they meet the patentability requirements and can be maintained. The oral hearing in the "tomato" case is scheduled for 8 November [unless, presumably, tomatoes go the same way as broccoli]...".

Recipe for tomatoes and broccoli here

Nutrition and broccoli

The danger of finishing your broccoli here

Broccoli and the licence to kill here