Notice from the European Patent Office dated 30 May 2011 concerning amendment of the Guidelines for Examination in the European Patent Office

By decision of the President of the European Patent Office dated 30 May 2011, the Guidelines for Examination in the European Patent Office have been amended pursuant to Article 10(2) EPC.

In particular, Part C-IV, 4.6.2 has been modified in order to take into account the decisions of the EPO Enlarged Board of Appeal in the "broccoli" (G 2/07) and "tomato" (G 1/08) cases bearing on the correct interpretation of the term "essentially biological processes for the production of plants or animals" as used in the European Patent Convention to exclude such processes from patentability.

C-IV, 4.6.2 now reads as follows:

"4.6.2 Processes for the production of plants or animals

A process for the production of plants or animals which is based on the sexual crossing of whole genomes and on the subsequent selection of plants or animals is excluded from patentability as being essentially biological, even if other technical steps relating to the preparation of the plant or animal or its further treatment are present in the claim before or after the crossing and selection steps. To take some examples, a method of crossing, inter-breeding, or selectively breeding, say, horses involving merely selecting for breeding and bringing together those animals (or their gametes) having certain characteristics would be essentially biological and therefore unpatentable. This method remains essentially biological and unpatentable even if it contains an additional feature of a technical nature, for example, the use of genetic molecular markers to select either parent or progeny. On the other hand, a process involving inserting a gene or trait into a plant by genetic engineering does not rely on recombination of whole genomes and the natural mixing of plant genes, and is hence patentable. However, a claim to such a process may not contain crossing and selection steps. A process of treating a plant or an animal to improve its properties or yield or to promote or suppress its growth, e.g. a method of pruning a tree, would not be essentially biological since, although a biological process is involved, the essence of the invention is technical; the same applies to a method of treating a plant characterised by the application of a growth-stimulating substance or radiation. The treatment of soil by technical means to suppress or promote the growth of plants is also not excluded from patentability (see also IV, 4.8.1)."

Furthermore, Part B-IX, 2.1(iii) and (iv) have been modified in order to cover PCT minimum documentation in the Spanish language in accordance with Rule 34.1(c)vi) PCT as well as to introduce the documentation of the Republic of Korea and the People's Republic of China as part of the PCT minimum documentation pursuant to Rule 34.1(c)ii) and (e) PCT.

Part B-IX, 2.1(iii) now reads as follows:

"The patents and/or published patent applications in the English, French or German language in which no priority is claimed, and the abstracts in English of the patents and/or published patent applications in the Spanish language in which no priority is claimed, as selected and made available by the national office of certain countries, e.g. Austria, Australia, Canada and Spain.;"

Part B-IX, 2.1(iv) now reads as follows:

"The abstracts in English of the patents issued, and/or patent applications published, by Japan, the former Soviet Union, the Russian Federation, the Republic of Korea and the People's Republic of China, and the inventors' certificates issued by the former Soviet Union and the Russian Federation, for which abstracts in the English language are generally available."

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