Tomatoes and Broccoli: a nice recipe for a patent dinner

Patentability of plants

The patentability of plants has been the subject of much discussion in Europe in recent years, following a number of decisions by the Enlarged Board of Appeal. A distinction is made between "essentially biological processes" i.e. conventional breeding techniques and other methods for breeding, such as methods in which a gene or trait is inserted into the genome by genetic engineering.

Broccoli I and Tomatoes I cases

The “Broccoli I” and “Tomatoes I” cases (G2/07 and G1/08) relate to the provision of the European Patent Convention which excludes such essentially biological processes for the production of plants and animals from patent protection (Article 53(b) EPC). In both these Broccoli I and Tomatoes I cases, the claims to methods of producing improved plants using SNP based selection, or through selection by extending the time in which fruit was left on the plate were considered to relate to unpatentable subject matter. Consequently the patent proprietors deleted the process claims so that the claim requests were restricted to product claims.

Broccoli II and Tomatoes II cases

However, the question remained open as to whether the plant products obtained by such essentially biological processes could be patented as such. In a long awaited decision in the Tomato II and Broccoli II cases (both cases were dealt with in a consolidated hearing), the Enlarged Board of Appeal has ruled that, while essentially biological processes cannot be patented, plants obtained by essentially biological processes are patentable, as long as the plants satisfy the conditions of patentability. The fact that the only method available at the filing date for generating the plant product as claimed is an essentially biological process for the production of plants disclosed in the patent application does not render a claim directed to plants or plant material other than a plant variety unallowable.

Pepper plants

While the decision on the Tomato II and Broccoli II cases was pending, the EPO granted a patent for traditionally cultivated red pepper plants with insect-resistant properties. The pepper plant was developed via normal, traditional cultivation and the insect-resistant properties were based on genetic material already in the gene bank. Opposition proceedings were filed by a coalition of non-governmental organisations. These proceedings were put on hold pending the outcome the Tomato II and Broccoli II cases.

The decision on the Tomato II and Broccoli II cases is likely to be of help to the patent proprietor of the pepper plants in the opposition proceedings. Likewise, I expect more patent applicants to go down the route of including “product-by-process” claims to products made by processes deemed ineligible for patent protection by the EPO.