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Pass the Patented Peas, Please: EPO Upholds Plant Product Patents


Photo By: darkuncle - CC BY 2.0

Decision of the Enlarged Board of Appeal, Case Number G 002/13 (Mar. 25, 2015)

Everything’s coming up roses for plant patent holders, following the European Patent Office’s recent endorsement of patents for tomato and broccoli plants.  In a March 25, 2015 decision, the Enlarged Board of Appeal (“EBA”) held that the European Patent Convention’s Article 53(b) prohibition on patents for production of plants by “essentially biological processes . . . does not have a negative effect on the allowability of a product claim directed to plants.” Decision of the Enlarged Board of Appeal, Case Number G 002/13 (Mar. 25, 2015) at 68.

The European Patent Office’s Technical Board of Appeals referred the question of Article 53(b) scope to the EBA in connection with two cases, “Tomato II” and “Broccoli II.” The patent at issue in Tomato II, European patent No. 1 211 926, concerns “a method for breeding tomatoes having reduced water content, and the product of the method.” Id. at 4. Broccoli II involves European patent No. 1 069 819, which was directed at broccoli produced through “a method for selective increase of the anticarcinogenic glucosinates in brassica species.” Id. at 12. 

The specific interpretative issue in both Tomato II and Broccoli II was whether the Article 53(b) patentability exclusion of essentially biological processes for the production of plants extends to the products of those methods. Id. at 3-4. Article 53(b) of the European Patent Convention states that a patent may not be granted in respect to “plant or animal varieties or essentially biological processes for the production of plants or animals.” Id. at 33, quoting Article 53(b). Prior interpretations of the statute did not address whether Article 53(b)’s scope was “limited to method or process claims” or whether it also encompassed a patent claim for a product that is directly obtained and/or defined by an “essentially biological process.” Id. at 41. The EBA ultimately concluded that product claims and product-by-process claims were not excluded by the Article 53(b) prohibition on processes. Id. at 66. Product claims cover “a concrete physical technological embodiment of an idea,” while product-by-process claims cover “a product in terms of the method (manipulative steps) used in the manufacture of the product.” Id. at 34. For both product and product-by-process claims, the patentability inquiry is independent of the patentability of any underlying process. Id. at 35.  Subsequently, the EBA concluded that Article 53(b) does not preclude the product and product-by-process claims in Tomato II and Broccoli II.

The plant patent cases received significant attention across Europe with amici curiae briefs filed by a wide swath of interested parties including patent attorneys’ associations, farmers’ and plant breeders’ associations, scientists and politicians. See id. at 28-29. Following the release of the Enlarge Board of Appeals decision, the “No Patents on Seeds” coalition backed by the Berne Declaration, Greenpeace, Misereor, No Patents on Life, Swissaid, and the Norwegian Development Fund, issued a statement expressing concern that the EPO “paved the way for companies such as Monsanto, Syngenta and others to take control of resources we all need for our daily lives.” “European Patent Office Upholds Patents on Broccoli and Tomato,” No Patents on Seeds, 27 Mar. 2015.

Additional commentary on the EPO’s decision in Tomato II and Broccoli II is available from Intellectual Property Watch, D Young & Co, and Morrison Foerster.