Article: January 2015 EU Litigation Update

Second Helping—The EPO’s Enlarged Board of Appeals Hears Tomatoes/Broccoli II. On October 27, 2014 the Enlarged Board of Appeals of the European Patent Office (EBoA) heard the two appeals against the Opposition Division’s decisions to allow product claims on certain types of tomatoes and broccolis (G 2/12 and G 2/13) following the referrals made in both instances by the respective Technical Boards of Appeals (TBA) (T 1242/06 and T 83/05).

Joint proceedings had already taken place in G 2/07 and G 1/08, respectively known as Tomatoes/Broccoli I. The issue before the EBoA at the time related to the patentability of methods to produce the concerned vegetables. In G 1/08, the patent concerned a method for breeding tomatoes having a low water content. It involved a step consisting in leaving the fruit on the vine past its normal point of ripening as well as a screening step to select a fruit with a reduced water content. In G 2/07, the patent concerned a method for breeding a certain type of broccoli having a cancer prevention effect. The claimed method involved several steps of crossing, selecting and backcrossing but also a screening step using molecular markers for the selection of specific hybrids. On December 9, 2010 the EBoA held that both processes fell under the patentability exclusion of Art. 53(b) EPC, being “essentially biological processes for the production of plants”. Following this decision, the parties amended their claims (deleting all process claims contained in their previous requests) and the cases were remitted to the respective TBAs for further prosecution of the remaining product claims. New referrals were made to the EBoA however, since allowing patentability of the product claims could be seen as a way of circumventing the process exclusion.

The recent hearing therefore revolved around the interpretation of Art. 53(b) EPC, in particular the potential extension of the essentially-biological-process exclusion to plant products issued from such processes. While the EBoA refused to issue a preliminary opinion at the close of the debates as requested by the Appellant in G 2/12, the Board indicated that reference could be made to its last communication to the parties dated July 15, 2014 in which it noted that considering the wording, purpose and legislative history of Art. 53(b) EPC, nothing could lead to an extensive reading of the expression “essentially biological processes for the production of plants”. The Board, however, invited the parties to summarize their submissions regarding the impact on the interpretation of Art. 53(b) of the following legal considerations: 
the effect of Rule 26(5) EPC which defines a process for the production of plants as being essentially biological “if it consists entirely of natural phenomena such as crossing or selection”;
the need for a dynamic interpretation having regards to factors which have arisen since the signing of the EPC and which might give grounds for assuming a restricting reading of the provision;
the scope of application of the “essential biological process” exclusion if claims on products generated by such processes are allowed; and finally
the role of Rule 27(b) EPC which warrants patent protection for plants “if the technical feasibility of the invention is not confined to a particular plant or animal variety”.

It is a very rare case when both Patentees and Opponents agree on what should be the outcome of a decision. In the present case, all parties advocated for a restrictive reading of the process exclusion. It was agreed on all sides that the Rules 26(5) and 27(b) EPC have to be interpreted in view of the legislative history of the Biotech Directive, which contains identical provisions (Articles 2(2) and 4(2) of Directive 98/44 EC on the legal protection of biotechnological inventions). According to the Parties, the legislative history of the Directive shows that the very narrow definition given for “essentially biological process for the production of plants” cannot support an extension of the process exclusion to products without depriving Rule 27(b) of its meaning.

Each party developed specific arguments regarding the need for a dynamic interpretation of Art. 53(b) EPC and the risk of rendering the process exclusion meaningless or without substance:
For Plant BioScience, one of the Applicants, the exclusion would still be applicable to new and improved methods or processes producing a known plant. This was also the approach formulated by the representatives of the President of the EPO. The EBoA, however, pointed out that this situation would relate to the issue of lack of novelty of the plant products themselves, rather than the scope of the process exclusion.

Syngenta, one of the Opponents, argued that the legislative intent for the exclusion of essentially biological processes is the prohibition of patents on non-technical breeding processes. A dynamic interpretation of Art. 53(b) EPC would not be necessary, since the inventive step requirement is sufficient to ensure that patents will not be granted on conventional breeding methods. Yet, this line of reasoning is unlikely to be followed by the EBoA as it reiterated at the start of the hearing its unwillingness to re-examine previous decisions: such an approach would indeed conflict with G 2/07 and G 1/08, which did not draw a distinction between technical and non-technical essentially biological processes.

Limagrain, another Opponent, requested that the need for a dynamic interpretation be considered in light of Art. 31(3) Vienna Convention which requires that subsequent agreements and practice between the parties (i.e. the Contracting States to the EPC) be taken into account. It submitted that since the signing of the Convention in 1973, there has been a clear wish to maintain patent protection for plant products since no amendments were made to Art. 53(b) EPC in 2000. Limagrain also specifically asked the EBoA to ensure that protection would not be conferred for the use of patented plant products for the production of new different plants.

The Board’s decision is expected to issue soon and the hope is that it puts an end to the uncertainties in Europe surrounding the question of plant product patents. The Board’s opinion will, in any case, be of paramount importance for any actor in the plant industry.