G2/12 and G3/12 – Patents and Plants

April 2015

In July 2013, the EPO Enlarged Board of Appeal (EBA) decided to consider the points of law in what have come to be known as the “Broccoli II” (G2/13 from T 83/05) and “Tomato II” cases (G2/12 from T1242/06).  These were themselves preceded by earlier EBA decisions, which were appealed.  The EBA decided to deal with these two cases in consolidated proceedings.

The referred questions concerned the exclusion of essentially biological processes for the production of plants/plant material in Article 53(b) EPC, and whether such exclusion can have a negative effect on allowability of patent claims directed to such. 

Article 53(b) states that, European patents shall not be granted in respect of…plant or animal varieties or essentially biological processes for the production of plants or animals; this provision shall not apply to microbiological processes or the products thereof.

In both referrals the parties submitted observations and the EBA invited the President of the EPO to comment.  The President commented that Article 53(b) EPC did not have a negative effect on the allowability of product claims to plants.  Any extension of an exclusion from patentability in this respect was a matter for the legislator to decide.

The EBA considered the term, “essentially biological processes for the production of plants”, and in particular whether it was to be limited to method or process claims, or whether it also encompasses a patent claim for a product that is directly obtained and/or defined by an “essentially biological process”.  They looked into the details of the grammatical, systematic, teleological, practical and historical interpretations of the wording.  Applying the various methodical lines of interpretation, the EBA stated that the process exclusion of Article 53(b) did not extend directly to a product claim or a product by process claim directed to plant or plant materials such as fruit, or to plant parts other than a plant variety. 

In its final conclusion, the Board stated that:

1. The exclusion of essentially biological processes for the production of plants in Article 53(b) EPC does not have a negative effect on the allowability of a product claim directed to plants or plant material such as a fruit.

2. In particular, the fact that 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 does not render a claim directed to plants or plant material other than a plant variety unallowable.

3. In the circumstances, it is of no relevance 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.

The consolidated outcome will no doubt be welcomed by plant breeders and scientists as it is now clear that Article 53(b) EPC does not render a claim directed to plants or plant material, other than a plant variety, unallowable per se.  

This update was prepared by Dr Richard Williams, Partner in our London office.

If you would like further advice on this or any other matter please contact Richard or your usual HGF representative or visit our Contact page to get in touch with your nearest HGF office.