Broccoli to go with your Tomatoes - EBA invites statements in referral G2/13

The IPKat regularly dispatches Merpel to the corridors of power in various European Institutions, and among others to the capacious halls of the European Patent Office (EPO) , where she delights in sniffing out patent attorneys and sometimes even barristers who are trying to keep a low profile.  Sometimes however, even with the indefatigable Merpel, the IPKat fails to immediately note every event of interest to issue from that august institution.

It is therefore with a little delay that the IPKat reports on this Communication from the Enlarged Board of Appeal (EBA) of the EPO in relation to pending referral G2/13 (not to be confused with a similar communication in relation to pending referral G1/13 reported by the IPKat last week.)

The EPO, in particular its Boards and Enlarged Board of Appeal, is currently greatly exercised on matters of vegetation.  The present referral G2/13, which is now imaginatively called Broccoli II, is closely similar to, and is rather a consequence of, the parallel case G2/12, called, you guessed it, Tomato II, whose pending referral was reported by the IPKat last year.  Both cases have been the subject of an earlier referral to the EBA in joined cases G2/07 and G1/08 respectively.  The decision in those two earlier referrals (which was reported by the IPKat here) had the effect that the process claims in each case were not to be allowed, being considered essentially biological processes (contrary to Art 53(b) EPC).  In consequence, both proprietors limited the patents to product claims.  In the current Broccoli case the main product claim was as follows:

An edible Brassica plant produced according to a method for the production of Brassica oleracea with elevated levels of 4- methylsulfinylbutyl glucosinolates, or 3-methylsulfinylpropyl glucosinolates, or both, which comprises:
a) crossing wild Brassica oleracea species selected from the group consisting of Brassica villosa and Brassica drepanensis with broccoli double haploid breeding lines;
b) selecting hybrids with levels of
4-methylsulfinylbutyl glucosinolates, or
3-methylsulfinylpropyl glucosinolates, or both, elevated above that initially found in broccoli double haploid breeding lines;
c) backcrossing and selecting plants with the genetic combination encoding the expression of elevated levels of 4-methylsulfinylbutyl glucosinolates, or 3-methylsulfinylpropyl glucosinolates, or both; and
d) selecting a broccoli line with elevated levels of 4-methylsulfinylbutyl glucosinolates, or 3- methylsulfinylpropyl glucosinlates [sic], or both, capable of causing a strong induction of phase II enzymes,
wherein molecular markers are used in steps (b) and (c) to select hybrids with genetic combination encoding expression of elevated levels of 4-methylsulfinylbutyl glucosinolates, or 3-methylsulfinylpropyl glucosinolates, or both, capable of causing a strong induction of phase II enzymes.

The Board of Appeal was about to maintain the patent in this amended form, but in the meantime in the Tomato case the Board in a different composition had developed doubts about the allowability of product claims as well, resulting in the further EBA referral Tomato II mentioned above.

The issues are largely similar to those in the earlier case, and so the first three questions referred (reproduced below) are along the same lines.  In the present referral, however, the proprietor has filed an auxiliary request in which it is attempted to disclaim potentially unallowable subject matter with the wording:

wherein the claim does not encompass an essentially biological process for producing the plant

this being a cunning ruse to attempt to overcome the prohibition of Art 53(b) EPC by using the wording of the legal provision itself.  The fourth referred question (reproduced below) seeks to determine whether this unusual form of disclaimer is to be permitted and would be successful to address any Art 53(b) issue.  It is not currently looking positive for the proprietor however, because the referring Board notes:

It is doubtful whether European patent law allows such a disclaimer or waiver. The board is not aware of case law dealing with this specific issue. 

Moreover, the second question has an additional element (2(a) below) to reflect that in the present Broccoli case the product claims have process features (i.e. they are product-by-process claims) whereas the product claim in the Tomato case was not.

The EBA is specifically inviting third party comment by the end of November 2013, so there is plenty of time to get your comments in!

The full text of the Communication from the EBA is reproduced below, including the text of the referred questions.

In accordance with Article 112(1)(a) EPC, Technical Board of Appeal 3.3.04 has referred the following points of law to the Enlarged Board of Appeal with interlocutory decision of 8 July 2013 in case T 83/05:

1. Can the exclusion of essentially biological processes for the production of plants in Article 53(b) EPC have a negative effect on the allowability of a product claim directed to plants or plant material such as plant parts?

2. In particular: 

(a) Is a product-by-process claim directed to plants or plant material other than a plant variety allowable if its process features define an essentially biological process for the production of plants?

(b) Is a claim directed to plants or plant material other than a plant variety allowable even if the only method available at the filing date for generating the claimed subject-matter is an essentially biological process for the production of plants disclosed in the patent application? 

3. Is it of relevance in the context of questions 1 and 2 that the protection conferred by the product claim encompasses the generation of the claimed product by means of an essentially biological process for the production of plants excluded as such under Article 53(b) EPC?

4. If a claim directed to plants or plant material other than a plant variety is considered not allowable because the plant product claim encompasses the generation of the claimed product by means of a process excluded from patentability under Article 53(b) EPC, is it possible to waive the protection for such generation by "disclaiming" the excluded process?

The text of the referral in English is available on the EPO website under http://documents.epo.org/projects/babylon/eponet.nsf/0/2E17DB8244857D0CC1257BA5004DFD8A/$File/ReferralT0083_05-3304.pdf

The Enlarged Board of Appeal considering the referral will be composed as follows: W. van der Eijk (Chairman), B. Günzel, C. Floyd, R. Menapace, U. Oswald, J. Riolo, G. Weiss

Third parties are hereby given the opportunity to file written statements in accordance with Article 10 of the Rules of Procedure of the Enlarged Board of Appeal (OJ EPO 2007, 303 ff) in one of the official languages of the EPO (English, French or German).

To ensure that any such statements can be given due consideration they should be filed by the end of November 2013 with the Registry of the Enlarged Board of Appeal, quoting case number G 2/13.

Each statement should also be accompanied by a list of cited documents and copies on paper or, preferably, CD/DVD of any such documents not previously filed.