Post by Dan Lorentzen
A recent decision has resulted in a change in European patent law that should make it easier to obtain patent protection for certain types of plants or plant products. Under European patent law (Article 53(b) of the European Patent Convention (EPC)), essentially biological processes for the production of plants are not eligible for patent protection. In addition, plant and animal varieties are excluded from patent protection. However, the outer limits of the exclusion have not previously been set: does Article 53(b) of the EPC exclude patent protection on all plants and animals, or does the statutory language make specific exceptions leaving room for non-varietal protection of plants and animals? The recent decision from the highest patent court in Europe—the European Patent Office (EPO) Enlarged Board of Appeal—has confirmed that plants as products (as opposed to the processes for making them) are eligible for patent protection under European patent law.
The case involved two different patents—the first covering tomatoes with reduced fruit water content, and the second covering broccoli with elevated levels of 3-methylsulfinylpropyl glucosinolates, or 4-methylsulfinylbutyl glucosinolates. The claims at issue in both patents were drafted as product-by-process claims, where the recited processes had previously been determined to be excluded by the EPC. The challengers to the patents argued that because the processes were excluded from patent protection, the products must also be excluded.
The two patents were granted, and each was the subject of a separate opposition proceeding at the EPO. The cases were both referred to appeal boards to for determination of whether the claims were excluded under the EPC. Ultimately, the cases were both referred all the way to the highest patent court at the EPO where they were consolidated.
The Enlarged Board of Appeal decided three questions:
(1) Whether the EPC exclusion of essentially biological processes for the production of plants precludes patent protection for product claims directed to plants or plant material such as plant parts;
(2) Whether (a) the fact that the process features of the product-by-process claims were biological processes for the production of plants or (b) 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 render the claims unallowable; and
(3) Whether it is relevant that the protection encompasses the generation of the claimed product by means of an essentially biological process for the production of plants excluded under the EPC.
The Board answered all of these questions in the negative.
In concluding that the plant products were eligible under the EPC, the Board determined that the claimed subject matter was not limited or directed to a plant variety, but rather related to the EPC exclusion from patentability of "essentially biological processes for the production of plants" other than plant varieties. The Board determined that the exception is limited to methods and processes, and does not encompass products that are obtained and/or defined by those methods or processes.
This decision represents a change in European patent law that should make it easier to obtain EPO patent protection for certain types of plants or plant products. However, as the Board noted in its decision, a number of EPO member countries—specifically Germany and the Netherlands—have amended their own patent laws to exclude products derived from essentially biological processes. This may create situations where an EPO patent is granted, but will not be validated by particular member countries.
The full decision is available here.