The Enlarged Board of Appeal (EBA) of the European Patent Office (EPO) has previously sought to provide clarification on whether plants resulting from biological processes that involve the crossing and selection of plants can be patented under the European Patent Convention (EPC).

In this regard, the EBA has decided in the consolidated cases, G2/07 and G1/08 (commonly referred to as the “broccoli” and “tomato” cases), that selection and breeding methods comprising sexually crossing the whole genomes of plants cannot be patented.  Biological processes that comprise steps which materially alter the breeding procedure, such that the resulting plants include a new or modified genetic trait that cannot be obtained by simple recombination of the parent genomes, are, however, patentable.

Following that ruling, the Technical Board of Appeal (TBA) of the EPO responsible for reviewing the patents granted in the broccoli and tomato cases is required to decide whether the patents thus meet the patentability requirements and can be maintained.

As reported in our earlier article, oral proceedings before the TBA in the tomato case did not end in a final decision.  This was largely as a result of the patent proprietor having filed new sets of claims for the tomato patent, in response to the EBA’s ruling in G1/08, directed only to products (tomato fruit) and not to the breeding processes used to produce such products.  In the TBA’s view the patentability of plants and plant material obtained using a non-patentable breeding process had not been settled by previous case law.  The TBA thus announced its intention to again refer questions of law to the EBA, for the latter to decide on the remaining legal ambiguities.

The TBA has now referred its legal questions to the EBA, under case number G 2/12.  The particular questions referred are:

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 a fruit?

2.    In particular, 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?

In other words, while it is clear from G2/07 and G1/08 that selection and breeding processes comprising sexually crossing the whole genomes of plants cannot be patented under the EPC, are products that directly result from such processes also non-patentable?

The decision of the EBA in G2/12 will be very important for practice, as it will imply an important impact on the patentability of plants and seeds.  It will be interesting to see if the EBA takes the same stance as the summary proceedings Judge in the Dutch case, Taste of Nature v Cresco, reported in our earlier article.  In that case, the Judge considered Article 53(b) EPC to exclude not only essentially biological methods from patent protection, but products directly obtained by using such methods also.  In the tomato case one of the opposing parties has taken a similar line of argument and it would appear from the reasons for the interlocutory decision of the TBA that it is minded to agree.