3.3. Essentially biological processes

In T 2049/23 the patent related to seedless watermelons and their production. According to the description, seedless watermelons are produced on triploid, self-infertile, F1 hybrid plants. These triploid hybrids need to be pollinated by a diploid polleniser to produce watermelon fruit. To this end, triploid plants are interplanted with polleniser plants for fruit production. Triploid, F1 hybrid plants are generated using pollen from diploid male parent plants to fertilise flowers of tetraploid maternal parent plants. The invention claimed in the patent related to both triploid and tetraploid watermelon plants with a bush growth habit. The claims of the patent as granted fell into two categories, with claims 1 to 16 being for products and claims 17 to 19 being for processes. The patent application had been filed in 2013.

The appellants (joint opponents) argued among other things that the claimed plants were nevertheless excluded under Art. 53(b) EPC and stated that they did not primarily rely on opinion G 3/19 (and by extension R. 28(2) EPC) for their objection. As the board understood it, they were of the view that R. 27 EPC provides a closed list of patentable "biotechnological inventions" and that the claimed plants being "conventional" plants, do not fall under one of the categories set out in this list. In their view, all other inventions relating to plants are not biotechnological inventions within the meaning of R. 27 EPC and therefore excepted from patentability under the exception to plant varieties. The board found that this reading of R. 27 EPC was however not correct. As can be taken from the use of the word "also", R. 27 EPC provides an open-ended list of types of patentable biotechnological inventions. This is seen in contrast to those biotechnological inventions defined in the open-ended list given in R. 28 EPC, which are expressly excepted from patentability. However, the fact that R. 27(b) EPC confirms that biotechnological inventions relating to plants are patentable, cannot be understood as implying that inventions relating to plants that are not biotechnological inventions are not patentable. Instead, the board held, that the exception to patentability of plant varieties set out in Art. 53(b), first half-sentence, EPC, is to be interpreted according to decision G 1/98. Thus, under Art. 53(b) EPC as interpreted by decision G 1/98, plants other than plant varieties are not excepted from patentability, regardless of whether or not they are considered to represent a "biotechnological" invention, that is to say, regardless of whether the plant is a conventional plant or results from genetic engineering.

In their submissions relating to the exception to patentability of plant varieties, the appellants also referred to decisions G 2/07 and G 1/08, to support the submission that "technical inventions" that "escape the ban on patenting" under Directive 98/44/EC should be based on genetic engineering or targeted modification of breeding traits, in which there was a clear characterisation of the relevant genetic information. However, the board held that decisions G 2/07 and G 1/08 were not relevant to the exception from patentability of plant varieties as they are concerned with the exception to patentability of essentially biological processes for the production of plants or animals in Art. 53(b) EPC..

Regarding the exception to patentability of essentially biological processes for the production of plants to products exclusively obtained by means of such a process and opinion G 3/19, the board found that it was common ground between the parties that a plant containing the bush allele as claimed will generally have to be produced by means of sexual crossing starting from a plant containing the relevant allele. The board observed that the application on which the patent in suit was granted was filed in the transitional period established in opinion G 3/19. Since it had been filed before 1 July 2017, the subject-matter of claims 1 to 16 was assessed for compliance with Art. 53(b) EPC as interpreted by the decisions G 2/12 and G 2/13. In view of this, the subject-matter of claims 1 to 16, was not excepted from patentability. The board noted that, under the legal framework currently in force (Art. 53(b), R. 28(2) EPC), the watermelon plants and the plant material capable of regenerating into plants, would likely be excluded from patentability because they arguably represent products exclusively obtained by means of an essentially biological process.

The appellants also submitted that the claimed watermelon plants having a bush growth habit constituted a discovery rather than an invention. In the present case, the board considered that the plants (and plant tissues) of claims 1 to 16 did not constitute a discovery (Art. 52(2)(a) EPC) because the claimed plants do not exist in nature.