The "melon patent" case - FAQ
Questions
- What is the "melon patent" case about?
- What is the legal basis for granting European patents?
- What does "opposition" mean?
- Why was the "melon patent" opposed, and by whom?
- Is it possible to grant patents on plants?
- How many patents has the EPO granted in the area of plants?
Answers
What is the "melon patent" case about?
The patent relates to melon plants resistant to a virus - cucurbit yellow stunting disorder virus (CYSDV) - that attacks melons, turning them yellow and reducing fruit yield. The plants are made resistant by the introduction of a gene from another melon plant by way of a conventional breeding method involving the use of a genetic marker ("marker-assisted breeding"). The gene which is responsible for the resistance was first found in a melon plant in India and catalogued in 1961. It has been publicly available since 1966.
The patent covers the modified plant, parts of the plant and its fruits and seeds, but not the breeding process for obtaining the plant.
The patent application was filed with the EPO on 21 December 2006 and the grant of the patent became effective on 4 May 2011. The patent is owned by Monsanto Invest B.V.
European Patent specification: Closterovirus-resistant melon plants
What is the legal basis for granting European patents?
The grant of European patents by the EPO is covered by the European Patent Convention (EPC), an international treaty ratified by 38 European states. The EPC defines the rules and procedures for granting patents for the territory of these states. Incorporating the relevant provisions of EU Directive 98/44 EC on the legal protection of biotechnological inventions, the EPC is applied by patent examiners dealing with patent applications in all technical fields, including biotechnology. The procedure is rigorous: only 45% of all patent applications are actually granted, in most cases with the scope of protection of the claims reduced over the original filing. In biotechnology, this figure is even lower, with only 28% of applications being granted.
What does "opposition" mean?
Any third party wishing to contest the grant of a European patent can file a notice of opposition to the patent within a period of nine months from the publication of the mention of grant. The notice must contain detailed reasons for the opposition, i.e. it must state how the patent contravenes the provisions of the EPC. The opponent then becomes party to a formal, court-like procedure before an Opposition Division of the EPO, in which he has to argue his case and oppose the views of the patent holder. The Opposition Division is made up of three technical experts and, in some cases, a patent law expert, who have to decide whether the patent can be maintained or whether it should be revoked, either in part or in full.
About five percent of the patents granted by the EPO are opposed, mostly by competitors of the patent holder, but in some cases also by individuals, NGOs or special interest groups. The decision of the Opposition Division can be appealed before the second-instance in-house judiciary of the EPO, the Boards of Appeal. Their ruling establishes a final decision on whether or not an invention can be patented under the EPC. The case law emerging from such procedures is essential for the development of patent practice at the EPO.
Why was the "melon patent" opposed, and by whom?
The period for filing oppositions in the "melon patent" case expired on 6 February 2012. The EPO has received two notices of opposition. One of them is from Nunhems, the vegetable seed-producing subsidiary of Bayer CropScience, who have objected to the patent on technical grounds, including lack of novelty and inventiveness of the patented plants. The other is from a coalition of NGOs acting under the heading "No patents on seeds", who, in addition to technical arguments, voice their concerns over the use of conventional breeding methods.
Access the electronic file and follow progress in the opposition
Is it possible to grant patents on plants?
According to the EPC, the task of the EPO is to grant European patents "for any inventions, in all fields of technology", provided that they are new, involve an inventive step and are industrially applicable. Biotechnology is an important sector of activity of the EPO, involving areas as diverse as microbiology, diagnostics, enzymes for detergents, genetic engineering and plants. Since its creation in 1978 the EPO has granted well over 1.5 million patents in all fields of technology. However, only 2.6% of the total of all granted patents deal with biotechnology.
Both the case law under the EPC and the EU directive on biotechnological inventions stipulate that plants are patentable if the technical feasibility of the invention is not confined to a particular plant variety. In other words, a patent may only be granted if the invention can be carried out in a number of plants.
In the area of plants, most patent applications relate to genetically engineered (GM) plants. However, there is no requirement under patent law for a plant to be modified by genetic engineering techniques for it to be patentable. In recent years, therefore, the EPO has also received a number of patent applications relating to plants obtained by new breeding techniques, such as marker-assisted breeding. Legal clarification as to whether such inventions are patentable under the EPC is still ongoing. A number of important decisions have already been rendered.
Patents are granted for technical solutions to specific technical problems. In the plant field, such solutions typically concern characteristics such as improvements in yield, higher nutritional value or resistance to drought and pests.
Article 52 EPC: Patentable inventions
No European patents for essentially biological breeding processes (press release from 9.12.2010)
How many patents has the EPO granted in the area of plants?
Patent statistics show that the number of European patent applications relating to plants in general has been stable at just over 800 applications per year since 2002. The vast majority of these applications (about 90%) concern genetically modified (GM) plants. Fewer than 100 patent applications claiming non-GM plants are filed every year (Fig.1).
Figure 1: Patent applications related to plants published by the EPO
Between 1990 and 2008, the EPO published 13 484 plant-related patent applications (final statistics for the period 2008 onwards are not yet available).
Many of these applications, however, never enter the examination phase before the EPO as they are abandoned by the applicant at an early stage, for example on receipt of the search report on the relevant state of the art. Other companies withdraw their application during substantive examination, while a small number of files end up being rejected by the Office (Fig.2).
Figure 2: Outcome of 9 167 plant-related European and international patent applications published by the EPO and for which a procedure before the EPO was initiated
This is reflected in the number of granted patents. Of the 13 848 patent applications relating to plants published by the EPO since 1990, 1 690 ended with the grant of a European patent. Of these, only 88 are patents for non-GM plants, while 1 602 relate to genetically modified plants (Fig.3).
Figure 3: European patents granted for plant-related inventions
