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New Referral in the Tomato Case

In a previous article we reported on the outcome of referral G1/08 to the Enlarged Board of Appeal (EBA). That referral was concerned with the interpretation of Article 53(b) EPC, which states that a European patent will not be granted for plant or animal varieties, or for essentially biological processes for the production of plants or animals.

The patent which led to the referral claimed a method for the production of a tomato plant bearing tomatoes with low water content, the method consisting essentially of sexually crossing the entire genome of two known tomato plants. In G1/08, the EBA held that a non-microbiological process for the production of plants consisting of sexually crossing the whole genomes of plants is excluded from patentability under Article 53(b) EPC, regardless of whether there is an additional technical step which enables said crossing. The claimed method was therefore found not to be patentable.

In response to this ruling, the claims of the patent in question were amended to claim the low water content tomato itself, rather than the method for producing it. The Technical Board of Appeal was then faced with the question of whether the new claims were directed to a plant variety (also excluded under Article 53(b) EPC), or if they in fact still fell under the “essentially biological process” exclusion.

The Technical Board of Appeal considered that, in order to be a “plant variety”, it is not necessary for the whole plant to be claimed. In other words, it is irrelevant that it is only the tomato being claimed, and not the whole tomato plant. They also stated that the tomato is not a “plant variety” simply because the claim is limited to a single species, or because conventional breeding processes are involved in its production.

Weighing up these issues, the Technical Board of Appeal came to the conclusion that the claim was not directed to a “plant variety” according to Article 53(b) EPC. However, they also considered that allowing the subject matter of the claims to be patented would effectively render the “essentially biological” exclusion ineffective, as such a ruling would enable this exclusion to be circumvented relatively easily. The board stated that finding the process to be excluded from patentability, but not the product produced by that process, would be inconsistent.

These issues had not been considered by the EBA in G1/08, and the Technical Board of Appeal decided that a second referral to the EBA was necessary in order to resolve this issue. The following questions have therefore been referred to the EBA in G2/12 (also known as Tomato II):

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?

15 June 2012

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