TOMATOES AND BROCCOLI ‘Processes and nothing more’
As expected, the Enlarged Board did not render a decision at
the end of the oral proceedings
or issue a preliminary opinion. Instead, as far as a preliminary opinion was concerned the board merely referred to its written comments provided in advance of the proceedings. We have summarised some of the arguments presented before and during oral proceedings.
Based plainly on the wording of article 53(b), EPC, it was argued that the exclusion of essentially biological processes for producing plants should be interpreted to merely refer to processes and nothing more. An extension to products would be against the law and would also violate the fi rst clause of the provision, which in fact is explicitly directed to products (plant varieties).
On the other hand, there was a central argument for a broader interpretation of the process exclusion to include products derived from an excluded process. T is was that allowing products generated by an essentially biological process would render the process exclusion clause completely ineff ective. As the technical board said in its second decision in T 1242/06, it would “frustrate the legislative purpose”.
During oral proceedings, this notion of rendering the exclusion process irrelevant became particularly noticeable. T e Enlarged Board asked the EPO representative whether she could think of any situation where the applicant, when faced with an objection under the process clause of article 53(b), could not simply escape this objection by reformulating the claim as a product claim. She answered no.
Regarding the legislative purpose of article 53(b), EPC, it was argued that the legislator’s intent was merely to prevent double protection under both the EPC and plant breeder’s rights legislation. A product exclusion limited to plant varieties would be suffi cient to comply with this intent and would not necessitate a broadening to all products derived from essentially biological processes.
Rule 27(b), EPC would also support this position. T is rule generally states that plants are patentable subject matter if the technical feasibility of the invention is not confi ned to a particular variety. In contrast, the technical board, in its second decision in T 1242/06, held that rule 27(b), EPC would not limit the applicability of the process clause of article 53(b), EPC to products.
Further, it was repeatedly argued—and is a
generally accepted rule of interpretation—that exclusion provisions should be interpreted in a narrow fashion. Following this reasoning,
42 Life Sciences Intellectual Property Review
“IT WAS ARGUED THAT THE LEGISLATOR’S INTENT WAS MERELY TO PREVENT DOUBLE PROTECTION UNDER BOTH THE EPC AND PLANT BREEDER’S RIGHTS LEGISLATION.”
article 53(b), EPC should be taken at face value: excluding only plant varieties and essentially biological processes, not any product generated by such a process.
T e parties also repeatedly invoked another general principle of European patent law—the strict separation of subject matter and scope of protection. It was argued that excluding products generated by essentially biological processes, because the product claim also aff ords protection against third parties carrying out the essentially biological process, would violate this established separation. T e question of patentability should be exclusively assessed on the basis of the claimed subject matter, ie, the technical features of the claims.
In this context, however, it is important to remember that there are other cases of products falling under process exclusions. For example, a claim to a stem cell that may only be produced by a process that destroys a human embryo at any point in time is excluded from patentability under rule 28(c), EPC. T is rule essentially states that uses of human embryos for industrial or commercial purposes are excluded from patentability. T erefore, in this case, the stem cell product confl icts with the process exclusion of rule 28(c), EPC. Of course, rule 28(c) and article 53(b), EPC serve diff erent purposes, but the Enlarged Board might draw on this case law as precedent.
We must await the fi nal decision of the Enlarged Board and hope that it will at least bring legal certainty to patentees and unfreeze the pending appeals that have been stayed in light of the present referrals. But even once the board has made its fi nal decision, applicants ought to be aware of national laws that might diff er from the EPC, such as the German Patent Act, which has been recently amended to explicitly exclude products generated by essentially biological processes.
Franz-Josef Zimmer is a partner at Grünecker. He can be contacted at:
zimmer@grunecker.de
Markus Grammel is a patent attorney trainee at Grünecker. He can be contacted at:
grammel@grunecker.de
Dr Franz-Josef Zimmer is qualifi ed as a German and European patent attorney and has more than 20 years’ experience in IP. He frequently publishes articles and presents lectures in life sciences IP matters. His practice includes prosecution, opposition and appeal proceedings before the German and European patent offi ces as well as representing clients in patent litigation before German courts.
Volume 2, Issue 1
Dr Markus Grammel is a patent attorney trainee and holds a PhD in chemical biology from T e Rockefeller University, New York, and a diploma in biology from the Technical University of Munich. He joined Grünecker in 2012 and is involved in obtaining, defending and opposing patent rights.
www.lifesciencesipreview.com
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