EP Melon Patent invalid: non-enabling technical disclosure

March 2016

The Decision of the Opposition Division in case EP1962578 is now available.   An essential element of the claimed melons is CYSDV resistance, introgressed from a wild melon Cucumis melo subsp. agrestis, which had been collected in India in 1961 and deposited under accession No. PI313970.  The legal requirement is that the deposited germplasm must be available to the public without restriction for the entire term of the patent.

The history, nature and character of the germplasm was examined in detail and it was concluded that the available material is not uniform or stable.  Starting with the original material in 1961, which was doubted to be homozygous for the resistance trait, seed increases were made at various points in time, including movement of seeds to the USSR and then to USA in 1966.  Even though the inventors had obtained and used material termed "PI313970" the source of the material was not disclosed.   Melons are known to be susceptible to loss of traits and the seed increase events were without selection pressure and therefore genetic drift was considered likely.   The patent also did not describe the exact conditions for performing the CYSDV resistance test, but this finding was in view of a description of two differing tests with conflicting results.

So a key finding here was technical, in that  a person of average skill in the art would face an undue burden in getting hold of seeds and therefore plants of PI313970 which actually have the essential CYSDV resistance. 

The issue of Art 53a EPC (morality) was dismissed in view of EU Regulation 511/2104 which implements the Nagoya Protocol, which does not mention patents or foresee any role of patent offices; and in reliance on Enlarged Board decision G1/98.  The OD stated that the EPO is unable to take into account economic effect on grant of patents in specific areas and to restrict field of patentable subject matters.     

The Patentee has until 24th April 2016 within which to lodge an Appeal.

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