In the recent referral “Broccoli II” (G2/13), the Enlarged Board of Appeal (EBA) of the EPO have been asked to consider whether claims to plant products are allowable, where the claimed plant product is produced by an essentially biological process.
So-called “essentially biological processes” are excluded from patentability in Europe and the UK. In the joint cases “Tomato I” and “Broccoli I”, the EBA held this exclusion to mean the process claims in both cases were not patentable (decisions G2/07, G1/08). In response, the proprietors limited their patents to product claims.
This raises the question of whether the exclusion from patentability of “essentially biological processes” applies to the products of these processes. Plant products produced by “essentially biological” methods are not explicitly excluded by the legislation; yet, it has been argued that allowing patents to plant products which may only be made by “essentially biological processes” appears inconsistent with the legislative purpose of excluding claims to the processes themselves.
Seeking clarification on this matter, the following questions have been referred to the Enlarged Board of Appeal in “Broccoli II”:
ii. In particular:
a) Is a product-by-process claim directed to plants or plant parts allowable if its process features define an essentially biological process for the production of plants?
b) 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 application?
iii. 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.
iv. If a claim directed to plants or plant material other than a plant variety is considered not allowable because the plant product claim encompasses the generation of the claimed product by means of a process excluded from patentability under Article 53(b) EPC, is it possible to renounce on the protection for such generation by “disclaiming” the excluded process?
Similar questions have been referred in the related “Tomato II” case (G2/12); however, the above set also includes a specific question relating to product-by-process claims (i.e. is a plant product patentable even if it is defined by the essentially biological process through which it is made), as well as asking whether, if plant products which could be made by an essentially biological process are excluded, can patentability be restored if the claim explicitly removes from its scope (disclaims) any such products which are made using that essentially biological process.
The EBA have invited observations on this matter, which may be filed until 30 November 2013. We await clarification of this matter from the EBA in due course.
For further information on the implications of this case, please contact Claire Baldock, Dr Edward Ronan or your usual Boult Wade Tennant adviser.