New referrals relating to the patentability of plants
These cases both related to the production of plants in which a trait was introduced into the plants by crossing and selection steps.
The Enlarged Board of Appeal (EBA) decided that since crossing and selection necessarily involve human intervention, the conclusion to be drawn is that a process for the production of plants which is based on the sexual crossing of whole genomes and on the subsequent selection of plants, in which human intervention, including the provision of a technical means, serves to enable or assist the performance of the process steps, is excluded from patentability as being “essentially biological” within the meaning of Article 53(b) of the European Patent Convention (EPC).
On this basis, if a patent claim is related to a process for obtaining plants based on sexual crossing and selection, these claims are not patentable irrespective of what other steps may be included in the claims.
"The decisions of the EBA in the present referrals will be very important for practice, as they will imply an important impact on the patentability of plants and seeds."
In order to counter the result of the G2/07 and G1/08 decisions, the proprietor of the ‘tomato’ case withdrew the claims relating to the breeding processes used to produce the plants, only maintaining claims relating to the plants and the plant material. The involved Technical Board of Appeal (TBA) found that the patentability of plants and plant material obtained using a non-patentable breeding process had not been settled by the previous decisions, and the TBA therefore referred new questions to the EBA, resulting in G2/12 (called ‘tomato II’).
The questions in the ‘tomato II’ referral can be summarised as follows: while it is clear from G2/07 and G1/08 that selection and breeding processes comprising sexually crossing the whole genomes of plants cannot be patented under the EPC, are products that directly result from such processes also non-patentable?
The TBA in the ‘broccoli’ case made a similar conclusion, and even though the plant claims in the G2/07 were not originally opposed, the proprietor agreed to allow the introduction of a new ground into the opposition, resulting in the ‘broccoli II’ case, G2/13.
There is significant overlap between the questions to the EBA in G2/13 and G2/12, but the key different questions in G2/13 are:
