TOMATOES AND BROCCOLI O


n October 27, 2014, the European Patent Offi ce’s (EPO) Enlarged Board of Appeal held oral proceedings in


the consolidated cases of Tomato II and Broccoli II (G2/12 and G2/13). T e board considered questions of law, referred by the same technical board of appeal in both cases, in what may well be the two longest appeals in the EPO’s history, pending since the mid 2000s.


Both appeals concern the patentability of plants, plant material and the processes for producing plants, specifi cally tomato plants and their fruits, and broccoli plants. What makes these two appeals unique is not only the widespread public attention they have drawn (attracting protests involving a giant infl atable tomato outside the EPO’s headquarters), but also that this is the second time the competent technical board of appeal has referred questions of law to the Enlarged Board.


At the heart of the legal debate is article 53(b) of


the European Patent Convention (EPC),


which states that: “European patents shall not be granted in respect of … plant or animal varieties or essentially biological processes for the production of plants or animals.” T is seemingly clear exclusion relates to products, namely plant and animal varieties, and to processes, namely those that are essentially biological.


PATENTING PLANT


PRODUCTS


The EPO’s Enlarged Board of Appeal is about to deliver its long-awaited fi nal decision on the patentability of plants, in the hope that it will at least bring legal certainty to patentees and


unfreeze pending appeals. Franz-Josef Zimmer and Markus Grammel of Grünecker report.


www.lifesciencesipreview.com


In the cases’ fi rst referrals (G 1/08 and G 2/07), the Enlarged Board held that any non-microbiological process for producing plants containing or consisting of the steps of sexually crossing the whole genomes of plants, and of subsequently selecting plants, is in principle excluded under article 53(b), EPC as an “essentially biological” process. For the exclusion to apply, it does not matter whether another step of a technical nature was present, eg, a genetic marker for selection purposes. One might have thought that this ruling closed the debate on article 53(b), EPC.


However, following the fi rst round of the Tomato and Broccoli decisions by the Enlarged Board in G 1/08 and G 2/07, the following question arose. Are products generated by an essentially biological process, whether in the form of a product-by- process claim or a regular product claim, to fall under the exclusion because they were generated by an essentially biological process excluded from patentability? T e competent technical board again thought it necessary to refer this question to the Enlarged Board.


On October 27, 2014, roughly eight years into the appeal proceedings, fi nal arguments (we hope) on the matter were heard by the Enlarged Board in Munich. We observed these proceedings.


Life Sciences Intellectual Property Review Volume 2, Issue 1 41


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