T 2049/23 - Watermelons and discoveries

Key points

• The opponents include "Keine Patente auf Saatgut! e.V.". The patent concerns a conventionally-bred watermelon.
• The opponent argued that "the transitional period created by opinion G 3/19 should not be taken into account and that it did not matter whether the patent applications were filed before or after July 2017."
• The present Board: "in order to ensure legal certainty and to protect the legitimate interests of patent proprietors and applicants, the Enlarged Board of Appeal [in G 3/19] further decided that "the new interpretation of Article 53(b) EPC given in this opinion has no retroactive effect on European patents containing such claims which were granted before 1 July 2017, when Rule 28(2) EPC entered into force"
• It seems that the opponent did not invoke Article of the AC decision that inserted Rule 28(2): "This decision shall enter into force on 1 July 2017. Rules 27 and 28 EPC as amended by Articles 1 and 2 of this decision shall apply to European patent applications filed on or after this date, as well as to European patent applications and European patents pending at that time" (OJ EPO 2017, A56). This is a pity, because the EBA did not expressly set aside that part of the AC's decision.
• On inventive step:  the appellants  [opponents] submit that the claimed watermelon plants having a bush growth habit constitute a discovery rather than an invention. The board understands this as an objection under Article 100(a) and Article 52(2)(a) EPC to the effect that the claimed subject-matter is not a patentable invention but a discovery.'" 
•  "According to the case law of the Boards, a substance which occurs in nature can be considered an invention when it is shown to give rise to a technical effect. This principle is reflected in Rule 27(a) EPC, according to which biotechnological inventions are patentable if they concern biological material which is isolated from its natural environment or produced by means of a technical process, even if it previously occurred in nature. 
• For example, if a microorganism is found in nature and shown to produce an antibiotic, the microorganism itself may also be patentable as one aspect of the invention. 
• Similarly, a gene which is discovered to exist in nature may be patentable if a technical effect is revealed, e.g. its use in making a certain polypeptide or in gene therapy
•  "The board considers that the plants (and plant tissues) of claims 1 to 16 do not constitute a discovery." 
• "While the "home-garden diploid watermelon [with] an interesting growth type" mentioned in paragraph [0119] of the patent [] could be argued to be a discovery, it is not part of the claimed subject-matter. Instead, the mutated allele present in said plant has been transferred to other plants (i.e. those producing seedless fruit) and these have been shown to produce a technical effect: as set out in paragraph [0001] of the patent "this plant can be grown at a higher density in the field compared to traditional non-bush triploid watermelon hybrids, leading to a higher fruit yield per hectare compared to triploid hybrids with normal growth habit (having an average longest vine length of above 200 or above 300 cm)"."
• The appeal is dismissed. 

EPO 

The link to the decision can be found after the jump.

T 2796/18 - Rule 28(2) after all

Key points

•  The AC decided, under the former President, that Rule 28(2) was to apply also retroactively to applications already pending on 01.07.2017. The present decision concerns an appeal against the refusal of such an application on the sole ground that "the subject-matter of claim 1 was therefore excluded from patentability pursuant to Article 53(b) EPC and Rule 28(2) EPC"  because the claimed plants were exclusively obtained by means of an essentially biological process, which was not disputed.
• The Enlarged Board in G 3/19 did not opine on the validity of Rule 28(2) at all. Rather, the Enlarged Board changed their interpretation of Article 53(b) EPC. That new interpretation does not apply to applications already pending on 01.07.2017, the Enlarged Board held. This leaves open to some extent whether Rule 28(2) and Article 3 of that AC decision (OJ 2017 A56) is valid. 
• The Technical Board of Appeal in the present decision: "as the present application was filed before 1 July 2017, and is still pending (see section I), the new interpretation of Article 53(b) EPC adopted in opinion G 3/19 (supra), does not apply. Furthermore, Article 53(b) EPC, as interpreted by decisions G 2/12 and G 2/13 of the Enlarged Board of Appeal (supra), does not exclude the subject-matter of the main request from patentability. In view of the above considerations, the board concurs with the appellant that the subject-matter of the claims is not excluded from patentability pursuant to Article 53(b) EPC in conjunction with Rule 28(2) EPC." 

EPO T 2796/18 - 

Link to the decision after the jump, as well as an extract of the decision text.

T 2796/18 - Rule 28(2) not to be applied to applications filed before 01.07.2017

 Key points

•  " The sole reason given by the examining division for rejecting the main request was that the claimed plants were exclusively obtained by means of an essentially biological process and that the subject-matter of claim 1 was therefore excluded from patentability pursuant to Article 53(b) EPC and Rule 28(2) EPC." 
• The Board: " as the present application was filed before 1 July 2017, and is still pending [], the new interpretation of Article 53(b) EPC adopted in opinion G 3/19 (supra), does not apply." 
• " Furthermore, Article 53(b) EPC, as interpreted by decisions G 2/12 and G 2/13 of the Enlarged Board of Appeal (supra), does not exclude the subject-matter of the main request from patentability.  In view of the above considerations, the board concurs with the appellant that the subject-matter of the claims is not excluded from patentability pursuant to Article 53(b) EPC in conjunction with Rule 28(2) EPC."
• As a comment, the Administrative Council decided that Rule 28(2) EPC “shall apply to European patent applications filed on or after this date [01.07.2017], as well as to European patent applications and European patents pending at that time”, Article 3 of the Decision of the Administrative Council 29.06.2017, OJ 2017 A56; i.e. also to applications filed before 1 July 2017 and still pending on 1 July 2017.

T 2796/18 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t182796eu1.html

Reasons for the Decision

1. The appeal complies with Articles 106 to 108 and Rule 99 EPC and is admissible.

Main request

Exceptions to patentability (Article 53(b) EPC)

2. The sole reason given by the examining division for rejecting the main request was that the claimed plants were exclusively obtained by means of an essentially biological process and that the subject-matter of claim 1 was therefore excluded from patentability pursuant to Article 53(b) EPC and Rule 28(2) EPC.

T 0420/19 - Art.53(b) and (not) Rule 28(2)

 Key points

• In this opposition appeal, claim 6 is directed to “ A barley plant, or part thereof, wherein the barley plant carries a mutation in the gene encoding methionine-S-methyltransferase(MMT) that causes a total loss of MMT function".” The opponent is a public interest group.
• The opponent submitted that “the claimed barley plants fell under the exception to patentability defined in Article 53(b) EPC because they were the direct product of an essentially biological process.” The filing date is in 2009.
• The Board notes that in G 3/19, the EBA further decided that "the new interpretation of Article 53(b) EPC given in this opinion has no retroactive effect on European patents containing such claims which were granted before 1 July 2017, when Rule 28(2) EPC entered into force, or on pending European patent applications seeking protection for such claims which were filed before that date".
• The Board, after some further remarks on this legal issue, notes that: “Since the patent was granted before 1 July 2017 (see section III above), the subject-matter of claim 6 (and dependent claims 7 to 9 and 16) is not excepted from patentability in view of Article 53(b) EPC as interpreted by the decisions of the EBA G 2/12 and G 3/12.”
•  As a comment, the Board does not comment on Rule 28(2) as the legal basis for the revocation. The Administrative Council decided that Rule 28(2) EPC “shall apply to European patent applications filed on or after this date [01.07.2017], as well as to European patent applications and European patents pending at that time”, Article 3 of the Decision  of the Administrative Council 29.06.2017, OJ 2017 A56.
•  The Enlarged Board in G 3/19 has not said expressly that Rule 28(2) is invalid, neither that said Article 3 of the AC Decision is invalid. However, from the present decision, it seems clear that at least said Article 3 is vacated. The present decision does not discuss Rule 28(2) as such. 
•  See also here.
•    Further on sufficiency: “The opposition division considered that the only methods given in the patent to obtain the claimed mutants was mutagenesis and subsequent screening, thus relying on identification of a chance event. In view of the number of plants that would have to be screened to arrive at the claimed invention, it was undue burden to identify further mutants in addition to those deposited pursuant to Rule 31(1)(a) EPC, been identified by this method”
•  “The board considers that the mere fact that mutagenesis is a random process and that large numbers of mutant barley plants might have to be screened does not, in the present case, represent an undue burden the skilled person. The board therefore does not agree with the opposition division that the fact that mutagenesis, due to reliance on mutations at "random" locations in the genome, necessarily represents an undue burden for the skilled person. …  In the present case, the invention is reproducible without undue burden because there is evidence that the chance event can be identified frequently enough to guarantee success.”
• As to inventive step: “ In the absence of a readily available library of insertional mutants of barley it would have been necessary to use a screening procedure for detecting mutant barley grains lacking MMT activity. No such assay is disclosed in either document D1 or D2. The need to develop such an assay would have dissuaded the skilled person from arbitrarily choosing barley when attempting to solve the technical problem.”

T 1854/19 - Implicitly overruling the Administrative Council

 Key points

• This is a follow-up case to G 3/19 (Pepper). In pepper, the Enlarged Board gave a new interpretation of Article 53(b) EPC which corresponds to Rule 28(2) EPC in excluding ‘essentially biological plants’ from patentability (but in fact appears to exclude more from patentability than Rule 28(2) EPC). The Enlarged Board said in G 3/19 that “this negative effect does not apply to European patents granted before 1 July 2017 and European patent applications which were filed before that date and are still pending”; the ‘negative effect’ is that of Article 53(b) EPC for the types of plant-related subject-matter recited in G 3/19 hn.1. 
• However, the Administrative Council decided that Rule 28(2) EPC “shall apply to European patent applications filed on or after this date [01.07.2017], as well as to European patent applications and European patents pending at that time”, Article 3 of the Decision Administrative Council 29.06.20147 OJ 2017 A56.
• The Enlarged Board in G 3/19 has not said (or at least not explicitly) that Rule 28(2) is invalid, neither that said Article 3 of the AC Decision is invalid.
• Therefore, G3/19 strictly speaking leaves open the question of whether Rule 28(2) is to be applied to applications filed before 01.07.2020
• The present Board: “In view of the provisions set out by the Enlarged Board of Appeal for European patent applications pending before 1 July 2017, the new interpretation of Article 53(b) EPC - announced in opinion G 3/19 [...]- has no retroactive negative effect on the subject-matter of the main request (see opinion G 3/19, points XXVIII and XXIX). This implies that the opinion does not acknowledge the retroactive effect, as provided for in Article 3 of the Decision of the Administrative Council of 29 June 2017 [OJ 2017 A56] that introduced Rule 28(2) EPC.”
• This Board finds that “the subject-matter of the set of claims of the main request is not excluded from patentability” because of the filing date of the present application and because " Article 53(b) EPC, as interpreted by decisions G 2/12 and G 2/13 is applicable to the present application”. Strictly speaking, the present Board still does not say that Rule 28(2) is not applicable to this application but this is unambiguously implied by finding that the subject-matter is not excluded from patentability. 
• So this Board finds that the Enlarged Board implicitly overruled the Administrative Council in G3/19.
• I note that said Article 3 of said Decision of the AC is not strictly speaking a provision of the Implementing Regulation, so it is not clear if Article 164(2) applies. 

EPO T 1854/19 - - link

Reasons for the Decision

1. The appeal complies with Articles 106 to 108 and Rule 99 EPC and is therefore admissible.

Main request - claims 1 to 14

Exceptions to patentability (Article 53(b) EPC)

2. In view of the provisions set out by the Enlarged Board of Appeal for European patent applications pending before 1 July 2017, the new interpretation of Article 53(b) EPC - announced in opinion G 3/19 of 14 May 2020 and being consequential to the introduction of Rule 28(2) EPC on 1 July 2017 - has no retroactive negative effect on the subject-matter of the main request (see opinion G 3/19, points XXVIII and XXIX). This implies that the opinion does not acknowledge the retroactive effect, as provided for in Article 3 of the Decision of the Administrative Council of 29 June 2017 that introduced Rule 28(2) EPC.

3. Thus, Article 53(b) EPC, as interpreted by decisions G 2/12 and G 2/13 (OJ EPO, 2016, A27 and A28) is applicable to the present application and the subject-matter of the set of claims of the main request is not excluded from patentability.

4. The board thus considers the appeal allowable.

G 0003/19 - Unpatentable plants (Pepper)

Key points

• “The Enlarged Board [] abandons the interpretation of Article 53(b) EPC given in decision G 2/12 [sic, G 2/13 is not mentioned]  and, in the light of Rule 28(2) EPC, holds that the term “essentially biological processes for the production of plants or animals” in Article 53(b) EPC is to be understood and applied as extending to products exclusively obtained by means of an essentially biological process or if the claimed process feature defines an essentially biological process” (r.26.8). Therefore, such products are not patentable under Article 53(b) EPC (see below for transitional provisions). 
• This leads to the headnote:
• “Taking into account developments after decisions G 2/12 and G 2/13 of the Enlarged Board of Appeal, 
• the exception to patentability of essentially biological processes for the production of plants or animals in Article 53(b) EPC has a negative effect on the allowability of 
• product claims and product-by-process claims directed to plants, plant material or animals, 
• if the claimed product is exclusively obtained by means of an essentially biological process
•  or if the claimed process features define an essentially biological process.”
• “This negative effect does not apply to European patents granted before 1 July 2017 and European patent applications which were filed before that date and are still pending.”
• I note that the alternative ground of exclusion from patentability due to process features (recited in a product-by-process claim)  defining an essentially biological process is not expressly specified in R.28(2) and reverses G 2/13 hn.2(a). The (only public) underlying document for R.28(2), CA/56/17 appears to be silent about process features. 
• The Enlarged Board also extends the prohibition to "plant material" in the headnote, unlike R.28(2) (see the comparison below). The interested reader is referred to CA/56/17, paras. 48, 50 and 64 for the reason why R.28(2) does not mention 'plant material'. The Enlarged Board does not mention that (not patentable) 'plant material' is restricted to propagation material. So perhaps the exception extends to claims directed to a harvested tomato and to tomato paste and tomato juice. Plant material 'such as fruit' is mentioned in G2/12 hn.1.
• Before arriving at its decision to overturn  G2/12 (and G2/13), “the Enlarged Board concludes that, in view of the clear legislative intent of the Contracting States as represented in the Administrative Council and having regard to Article 31(4) Vienna Convention ["a special meaning shall be given to a term if it is established that the parties so intended"], the introduction of Rule 28(2) EPC allows and indeed calls for a dynamic interpretation of Article 53(b) EPC.”
• The Enlarged Board, however, begins its analysis by rephrasing the questions referred by the President of the Office. The first question is rephrased because the “wording of question 1 is too general and unspecific in that it broaches an institutional topic which reaches well beyond the ultimate object of the referral”.
• The Enlarged Board considers the rephrased question to be admissible: “there are different decisions of two Boards of Appeal on the question whether an amendment to the Implementing Regulations can have an impact on the interpretation of an Article of the EPC” (namely, T 1063/18 implying that such amendment can't have such an impact and T 315/03, r.7.3 stating that “that Article 53(a) EPC contains nothing which precludes or limits its own subsequent interpretation [] by (secondary) legislation”). 
• The Enlarged Board decision has the advantage that it avoids a clash with the Contracting States (wisely, in my view). At the same time, the Enlarged Board appears to leave open the question of whether Rule 28(2) EPC is binding on the Enlarged Board. 
• “[A]lthough neither the Contracting States, in accordance with Article 172 EPC, nor the Administrative Council, in accordance with Article 33(1)(b) EPC, has formally amended Article 53(b) EPC to extend the scope of the process exclusion to animals, plants and plant material obtained by essentially biological processes, when now interpreting Article 53(b) EPC, the Enlarged Board cannot ignore the Administrative Council’s decision to introduce a new paragraph 2 in Rule 28 EPC”. The phrase ‘cannot ignore’ seems to have a different meaning than ‘is bound by’. Indeed the headnote shows that R.28(2) does not preclude the Enlarged Board from declaring more subject-matter non-patentable. 
• “As the content of Rule 28(2) EPC does not stand in contradiction to the new interpretation of Article 53(b) EPC given in this opinion, there is no conflict between these provisions.” (emphasis added)
• As to the transitional provision: “For applications, the relevant date is their date of filing or, if priority has been claimed, their priority date.”
• Also interesting is the statement that “[i]rrespective of [the legal status of the Commission's Notice under EU law], as an independent international organisation with its own autonomous legal order, the EPOrg is not directly bound by Union law. It is therefore all the more true that a legally non-binding Notice on the interpretation of the EU Biotech Directive issued by the EU Commission in reaction to decisions of the Enlarged Board on the interpretation of a provision of the EPC, i.e. Article 53(b) EPC, does not form part of EPC law.”

• On the general question of whether exceptions are to be interpreted in a narrow or a broad way: “the Enlarged Board also confirms [...] that the object and purpose of the exception to patentability under Article 53(b) EPC is not sufficiently obvious to answer the question whether or not the clause is to be construed in a narrow or broad way.”

• One Board member of the panel in G3/19 was also a member of the (combined) panel in G 2/12 and G2/13. This member was interestingly enough also the rapporteur in all three cases  (link). 

• The decision recites  “the claimed process features”, but I think that features are not strictly speaking claimed. Subject-matter is claimed, features are recited in a claim. Possibly the headnote should be read as “if the process features of the product-by-process claim define an essentially biological process” (cf. G2/13, hn.2(a)).
• The decision recites “or if the claimed process feature define” (sic) in r.3.3, 'features' in the plural in the headnote and "the claimed process feature defines" r.26.8 but I don't think this any relevance for the substance of the holding.

EPO Headnote
Taking into account developments after decisions G 2/12 and G 2/13 of the Enlarged Board of Appeal, the exception to patentability of essentially biological processes for the production of plants or animals in Article 53(b) EPC has a negative effect on the allowability of product claims and product-by-process claims directed to plants, plant material or animals, if the claimed product is exclusively obtained by means of an essentially biological process or if the claimed process features define an essentially biological process.
This negative effect does not apply to European patents granted before 1 July 2017 and European patent applications which were filed before that date and are still pending.

Comparison G 3/19 vs. Rule 28(2)

Headnote: "plants, plant material or animals, if the claimed product is exclusively obtained by means of an essentially biological process or if the claimed process features define an essentially biological process"

Rule 28(2): "plants or animals exclusively obtained by means of an essentially biological process"

Addendum 20.07.2020
The Supreme Court has stated: “The principle that statutes operate only prospectively, while judicial decisions operate retrospectively, is familiar to every law student.” Rivers v. Roadway Express, Inc., 511 U.S. 298, 311-12 (1994).  link (with further references and discussion)

EPO G 0003/19 - link
G 3/19 G3/19


SUMMARY OF THE PROCEEDINGS
The referred questions

I. By letter dated 4 April and received on 8 April 2019, the President of the European Patent Office (hereinafter the EPO President) referred the following questions to the Enlarged Board of Appeal (hereinafter the Enlarged Board) under Article 112(1)(b) EPC:

1. Having regard to Article 164(2) EPC, can the meaning and scope of Article 53 EPC be clarified in the Implementing Regulations to the EPC without this clarification being a priori limited by the interpretation of said Article given in an earlier decision of the Boards of Appeal or the Enlarged Board of Appeal?
2. If the answer to question 1 is yes, is the exclusion from patentability of plants and animals exclusively obtained by means of an essentially biological process pursuant to Rule 28(2) EPC in conformity with Article 53(b) EPC which neither explicitly excludes nor explicitly allows said subject-matter?

REASONS FOR THE OPINION

The relevant legal provisions

I. Specific reference will be made to the following:

Article 112(1)(b) EPC Decision or opinion of the Enlarged Board of Appeal;
Article 53(b) EPC Exceptions to patentability;
Rule 26(1) and (5) EPC General and definitions, corresponding to Rule 23b(1) and (5) EPC 1973, which was inserted in the Implementing Regulations by decision of the Administrative Council of 16 June 1999 and entered into force on 1 September 1999 (OJ EPO 1999, 437);
Rule 27(b) EPC Patentable biotechnological inventions, as amended by decision of the Administrative Council CA/D 6/17 of 29 June 2017 (OJ EPO 2017, A56) and in force from 1 July 2017;
Rule 28(2) EPC – Exceptions to patentability, introduced by decision of the Administrative Council CA/D 6/17 of 29 June 2017 (OJ EPO 2017, A56) and in force from 1 July 2017;
Articles 31 and 32 Vienna Convention on the Law of Treaties of 23 May 1969 (Vienna Convention);

Articles 1 to 4 Directive 98/44/EC of the European Parliament and of the Council of 6 July 1998 on the legal protection of biotechnological inventions (EU Biotech Directive, OJ EU 1998 L 213/13; OJ EPO 1999, 101).

[Article 31  General rule of interpretation

1. A treaty shall be interpreted in good faith in accordance with the ordinary meaning to be given to the terms of the treaty in their context and in the light of its object and purpose.

2. The context for the purpose of the interpretation of a treaty shall comprise, in addition to the text, including its preamble and annexes:
(a) any agreement relating to the treaty which was made between all the parties in connexion with the conclusion of the treaty; (b) any instrument which was made by one or more parties in connexion with the conclusion of the treaty and accepted by the other parties as an instrument related to the treaty.

3. There shall be taken into account, together with the context:
(a) any subsequent agreement between the parties regarding the interpretation of the treaty or the application of its provisions; (b) any subsequent practice in the application of the treaty which establishes the agreement of the parties regarding its interpretation; (c) any relevant rules of international law applicable in the relations between the parties.


4. A special meaning shall be given to a term if it is established that the parties so intended.

Article 32 Supplementary means of interpretation

Recourse may be had to supplementary means of interpretation, including the preparatory work of the treaty and the circumstances of its conclusion, in order to confirm the meaning resulting from the application of article 31, or to determine the meaning when the interpretation according to article 31:

(a) leaves the meaning ambiguous or obscure; or (b) leads to a result which is manifestly absurd or unreasonable.]

Scope and focus of the referral

II. As an initial matter, before the admissibility and substantive issues of the referral are addressed, it is necessary to analyse the scope and focus of the referred questions and the supporting reasoning. Formally speaking, the present referral addresses two issues: first, the scope of the Administrative Council’s power to adopt or amend Rules of the Implementing Regulations to give effect to an interpretation of an Article of the EPC which differs from that given in an earlier decision of the Boards of Appeal or the Enlarged Board of Appeal (question 1); secondly, the proper interpretation of Article 53(b) EPC following the adoption of Rule 28(2) EPC, which excludes from patentability plants and animals exclusively obtained by means of an essentially biological process (question 2).

T 2323/11 - Essentially biological process

Key points

• Claim 1 is directed to a method of producing a transgenic plant, by crossing two transgenic plants. The first plant has the gene of interest introduced, as well as an introduced marker gene. The second plant has a gene introduced that removes, upon crossing with the first plant, the marker gene. This removal step occurs after the zygote is formed.
• The question raises whether this method is "essentially biological" and hence excluded under Articel 53(b) EPC.
• The Board finds the method to be excluded.  " The board considers therefore that the trait of the excision of the target gene is the result of the crossing of the parent plants and is determined by the underlying natural phenomenon of meiosis, as the latter determines the genetic make-up of the plants produced. [] The board thus concludes that the claimed method is a method as held to be excluded from patentability by virtue of Article 53(b) EPC "

EPO T 2323/11 -  link

Reasons for the Decision

1. The appeal is admissible.

Main request and 1st auxiliary request - claim 1

The invention described in the application

2. Genetic engineering of plants by transformation typically involves the introduction of a gene of interest ("trait gene") and a marker gene (e.g. a selectable marker such as an antibiotic or herbicide resistance gene) into the genome of the plant. The marker sequence allows identification and selection of desired plant cells during the transformation process, but typically lacks any function after the transformation was successful. However, their presence in the genome of the resulting organisms influences the acceptance of such plants as food products among consumers (see application as published page 1, lines 9 to 20).

3. The present invention concerns the removal of unwanted sequences, e.g. such marker sequences, from the genome of transgenic plants which comprise an introduced gene for an agronomically valuable trait. The claimed method concerns the sexual crossing of two distinct transgenic parent plants. The first transgenic parent plant contains, besides sequences of interest conferring a particular trait on the plant, an undesired gene sequence in its genome ("target gene"). The second transgenic parent plant comprises a transgene encoding a particular sequence-specific DNA endonuclease which, when expressed in a cell which comprises the "target gene" in its genome, irreversibly excises this target gene from the genome. From such crosses, descending plants can be isolated which lack the marker sequences in their genome.

T 0547/10 - No plant variety

Key points

• The Board finds that a claim directed to transgenic "cotton plants" does not constitute an (excluded) plant varieties, because the requirement of Rule 26(4)(a) EPC is not met because the claimed plants are not defined "by the expression of the characteristics that results from a given genotype or combination of genotypes"

EPO T 0547/10 - link

Plant varieties (Article 53(b) EPC)

6. The subject-matter of claim 1 are cotton plants, where the term "cotton" is used in the art as a synonym for the plant species Gossypium hirsutum (see application, page 2, line 17). "Species" is the botanical taxon of the rank falling below the taxon "genus". The population of plants that constitutes a plant species includes within it, inter alia, sub-groupings known as plant varieties, as defined in Rule 26(4) EPC.

G 2/12 and G 2/13 - Plant products - Broccolli and Tomato II

EPO G 2/13 and G 3/13 (G 0002/12 and G 0002/13)

Combined EPO Headnotes

1. The exclusion of essentially biological processes for the production of plants in Article 53(b) EPC does not have a negative effect on the allowability of a product claim directed to plants or plant material such as a fruit / such as plant parts.

2 [G2/12] In particular, the fact that 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 patent application does not render a claim directed to plants or plant material other than a plant variety unallowable.
2.(a) [G2/13]The fact that the process features of a product-by-process claim directed to plants or plant material other than a plant variety define an essentially biological process for the production of plants does not render the claim unallowable.

2.b. [G2/13] The fact that 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 patent application does not render a claim directed to plants or plant material other than a plant variety unallowable.

3. In the circumstances, it is of no relevance 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.



G2/12


1. The exclusion of essentially biological processes for the production of plants in Article 53(b) EPC does not have a negative effect on the allowability of a product claim directed to plants or plant material such as a fruit.

2. In particular, the fact that 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 patent application does not render a claim directed to plants or plant material other than a plant variety unallowable.

3. In the circumstances, it is of no relevance 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.


G2/13
1. The exclusion of essentially biological processes for the production of plants in Article 53(b) EPC does not have a negative effect on the allowability of a product claim directed to plants or plant material such as plant parts.
2.(a) The fact that the process features of a product-by-process claim directed to plants or plant material other than a plant variety define an essentially biological process for the production of plants does not render the claim unallowable.
2.(b) The fact that 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 patent application does not render a claim directed to plants or plant material other than a plant variety unallowable.
3. In the circumstances, it is of no relevance 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.

Analysis

• An important reason seems to be that the exclusion of "plant varieties" is confirmed to be a "very specific and narrow exclusion", such that it is difficult to accept a systematic approach leading to a broad understanding of the exclusion of essentially biological processes which would extend the scope thereof from process claims to product claims. The Enlarged Board rather finds that the exclusion of essentially biological processes "is aimed at averting an inconsistency with regard to the first group of exclusions".

G2/13 and G2/12 of 25.03.2015

G2/13 Enlarged Board - publication A - for the decision, click here
G 2/12 link

[text omitted]