In view of the responses given by the Enlarged Board in its decision G 1/08, appellant I in case T 1242/06 deleted the process claims so that the claim requests on file were then restricted to product claims directed to tomato fruits or tomato fruit products.
In its second interlocutory decision in T 1242/06 of 31 May 2012 (OJ 2013, 42), the board expressed serious concern that allowing claims to plant material obtained by means of an essentially biological breeding process would de facto frustrate the legislator's intentions in framing the process exclusion, which had been highlighted in decision G 1/08, and in many cases make circumvention of the exclusion a matter of skilful claim drafting, thereby diminishing the consistency and persuasiveness of the legislative framework of the EPC as regards patentable subject-matter. The board was of the opinion that these issues raised points of law of fundamental importance and referred the following questions to the Enlarged Board of Appeal for decision:
(1) Can the exclusion of essentially biological processes for the production of plants in Art. 53(b) EPC have a negative effect on the allowability of a product claim directed to plants or plant material such as a fruit?
(2) In particular, 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 patent application?
(3) 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 Art. 53(b) EPC?
The case is pending as G 2/12.