Dispute over patent for broccoli with improved anti-cancer properties

In another referral to the EPO's Enlarged Board of Appeal, questions have been posed to establish what is meant by an “essentially biological process” for producing plants.

The European patent in question (EP 1069819) was granted to Plant Bioscience Ltd. back in 2002 and claims methods for producing broccoli plants that have an increased level of an anti-cancer compound, glucosinolate, as well as seeds and plants obtained by these methods.

Glucosinolate compounds, which protect against cancer, are found in low levels in traditional broccoli as well as related Brassica vegetables such as cabbage, cauliflower, Brussels sprouts, watercress and rocket.

The inventors for EP 1069819 found a method for making “super” broccoli plants with levels of these protective compounds that are 3-4 times higher than those found in standard varieties. Their method isn't based on genetic modification but instead uses standard breeding processes which are “marker assisted”. These “marker assisted” breeding processes are becoming a common technique for generating new plant varieties and are arguably of a highly technical nature.

The patent was opposed by other plant breeding companies, Limagrain and Syngenta, who argued that the patent should be revoked because its claims refer to an “essentially biological process”.

Article 53(b) EPC states that:

“European patents shall not be granted in respect of:

[...]

(b) plant or animal varieties or essentially biological processes for the production of plants or animals; this provision does not apply to microbiological processes or the products thereof.”

This provision was originally intended to exclude conventional, straight forward breeding processes from patent protection. During the opposition proceedings, the EPO Appeal Board was asked to consider whether the claims should be excluded as being directed to an essentially biological process if additional technical features, in this case using markers to assist selection, were present.

The EPO has referred the case to Enlarged Board of Appeal (in T 83/05), asking the following questions:

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?

3. The Enlarged Board of Appeal is therefore being asked to clarify exactly what is meant to be excluded by Article 53(b) EPC and their decision is to be expected within about a year. This will be of significance not only to Plant Biosciences Ltd but also to other plant breeders including the opponents, Limigrain and Syngenta, who both have a number of patents pending in this area and will be keen to see the EPO confirm a narrow interpretation of the exclusion so that patents are available to protect their considerable investment in developing these new plant breeding techniques.

01 Jan 2007

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