Mutant barley plant patent dispute keeps bubbling away as Board of Appeal remits beer case to Opposition Division

The bitter dispute has continued over Carlsberg and Heineken’s patents for new barley plants. The EPO Board of Appeal decision in T 2178/22 Mutant Barley Plants/CARLSBERG - decided at the end of March but only published on Wednesday - remitted the case to the Opposition Division due to procedural unfairness in the way it handled the issue of inventive step.

Background

Photo by Wilmer Edson, via Pexels

Carlsberg and Heineken are the joint owners of several patents on new types of barley plants, a key ingredient for most beers. As previously discussed in the IPKat here, one of their patents (EP2373154) concerned a barley plant with a genetic mutation that resulted in lower levels of dimethyl sulphide (DMS). Whilst high levels of DMS create unpleasant sulphurous flavours, the beers made from the low-DMS barley plant had an enhanced flavour profile.

That patent was opposed on the grounds the barley plant, as the result of well-known mutagenesis and breeding selection methods, should be excluded from patentability for being a product of essentially biological processes. However, the patent was granted before 1 July 2017, when Rule 28(2) EPC came into force. In 2021, the Board of Appeal in T 0420/19 affirmed that Pepper (G 3/19) did not have retroactive effect, so the invention was not excluded subject matter.

The latest dispute concerns EP2575433, entitled 'Energy Saving Brewing Method', granted in 2016. The patent is directed to a method for preparing a barley based beverage (Claims 1-6), a barley plant (Claims 7-11), a malt composition (Claim 12), and a barley-based beverage (Claims 13-16). Claim 7, as granted, stated that the barley plant comprises a first mutation that results in a total loss of functional LOX-1, a second mutation resulting in a total loss of functional LOX-2 and- 4, and a third mutation resulting in a total loss of functional MMT (resulting in low-DMS barley plants with the benefits described above). The energy savings can be achieved because the barley does not require heat treatment to denature the lipoxygenase (LOX) enzymes and reduce the levels of DMS.

The Opposition and Board of Appeal decision

Campaign imagery from No Patents on Seeds!
against the Carlsberg & Heineken patents

The opposition was coordinated by a coalition called "No Patents on Seeds!" and involved many organisations, including a private Austrian brewery called Hirt. The opposition was made on the basis of novelty, inventive step, sufficiency, and patentable subject matter. The Opposition Division rejected all of these arguments, and the opponents appealed.

While the opponents sought revocation of the patent as a whole, many of their arguments were focused on the claims to a barley plant (Claims 7-11). They argued that the invention was excluded subject matter as the product of an essentially biological process, but since the patent was granted before the July 2017 cut-off date, the Opposition Division rejected this argument, citing T 0420/19. As for the exclusion of plant varieties, the three mutations could be introduced into any barley plant, so the Opposition Division held that the exclusion also did not apply. 

However, there were problems with the Opposition Division's approach to inventive step. The opponents argued that the process in Claims 1-6 "represented a normal malting and brewing process for pale malt", while Claims 7-16 "solved the problem of improving the taste of a beverage by a non-technical approach" of traditional plant breeding. However, the Opposition Division's decision only focused on Claim 7. Whilst the Board of Appeal noted that the decision could reasonably extend to its dependent claims, the Opposition Division had failed to make findings about the remaining independent claims 1, 12 and 13 (and their dependent claims), which are directed to different subject matter. In the absence of a finding that the opponents' objections to Claims 1-6 and 12-16 were unsubstantiated or not convincing, there was a violation of the opponents' right to be heard.

The Board of Appeal set aside the earlier decision and remitted the case to the Opposition Division for reconsideration.

Concluding Thoughts

The opposition to these barley patents highlights the ongoing tensions about plants as patentable subject matter in Europe. As the EU continues the trialogue negotiations about the proposed regulation of new genomic techniques (NGTs) for plants (with the EU Parliament's proposed "patent ban" amongst the points of debate), the controversy won't stop brewing any time soon.