The Enlarged Board of Appeal (EBA) at the EPO has decided that plant products produced by “essentially biological processes” (for example, sexual crossing) are eligible to be patented.
The EBA had previously decided in G2/07 and G1/08 (the so-called Broccoli I and Tomato I decisions) that a claim to a method which included as a step an “essentially biological process” could be excluded from patent eligibility by A. 53(b) EPC, even if it included other technical steps.
In referrals G2/13 and G2/12 – the so-called Broccoli II and Tomato II referrals – the EBA was asked whether the same provision also excluded from patent eligibility those plant products produced by essentially biological processes. These referrals were previously reported here, which also includes the questions referred. In particular, the EBA was asked whether a claim to a plant product should not be patent eligible if the only way of producing the product was by an essentially biological process, or if the claimed plant product was defined by the essentially biological process used to produce it (a so-called product-by-process claim).
The EBA invited third parties to submit observations on these questions. One such set of observations was prepared by Senior Partner Claire Baldock on behalf of the AIPPI, for whom Claire chairs the Biotechnology Committee. The AIPPI argued that the EBA should decide that claims to plant products should not be excluded from patent eligibility. Amongst other points, the AIPPI argued that it is settled patent law that the patent eligibility of a product should not be influenced by the process by which it is made. The full AIPPI submissions can be found here.
The EBA noted that there were a number of ethical, social and economic aspects to the patent eligibility of products produced by essentially biological processes, many of which had been raised in observations by other third parties. However, the EBA emphasised that their role was to interpret the EPC rather than “engage in legislative policy”. In addition, it was noted by the EBA that those nations (e.g. The Netherlands and Germany) which consider that plant products obtained by essentially biological processes should not be patent eligible, have specified as such in their own legislation. These national provisions are supplemental to those which exclude essentially biological processes from patent eligibility.
Alongside taking these factors into account, the EBA provided an extensive discussion of the possible interpretations of the provision which excludes “essentially biological processes” from patent eligibility (A. 53(b) EPC). In light of these interpretations and considerations, the EBA concluded that the exclusion of essentially biological processes from patentability should not be understood to exclude plant products from patent eligibility. This is the case even if the product claimed can only be produced by such an essentially biological process, or if the product is defined by the essentially biological process used to produce it.
This decision has been widely welcomed, and provides clarity for those patent applicants and proprietors left uncertain following the Broccoli I and Tomato I decisions.
For further information, please contact Nina White or your usual Boult Wade Tennant adviser.