3.3.3 Product claims for plants or plant material
On 4 April 2019 the President of the EPO referred to the Enlarged Board points of law on the interpretation of Art. 164(2) EPC and the assessment of R. 28(2) EPC under said provision.
In its opinion G 3/19, the Enlarged Board began by analysing the scope and focus of the referral and held that the two issues underlying it were interlinked and could be combined in the following single question:
"Taking into account developments that occurred after a decision by the Enlarged Board giving an interpretation of the scope of the exception to patentability of essentially biological processes for the production of plants or animals in Article 53(b) EPC, could this exception have a negative effect on the allowability of product claims or 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 feature define an essentially biological process?"
Interpretation of Art. 53(b) EPC and subsequent agreement or practice
Considering Art. 53(b) EPC on its own, i.e. without reference to R. 28(2) EPC, the Enlarged Board confirmed its earlier decisions in cases G 1/98, G 2/07 and G 1/08, and G 2/12 and G 2/13. Furthermore, the Enlarged Board did not find any subsequent agreement or practice within the meaning of Art. 31(3)(a) and (b) Vienna Convention regarding its earlier interpretation.
Dynamic interpretation in the light of Rule 28(2) EPC
The Enlarged Board held that the application of the various methods of interpretation provided for in Art. 31 and 32 Vienna Convention, also taking into account the subsequent developments in the contracting states, did not lead to the finding that the term "essentially biological processes for the production of plants" in Art. 53(b) EPC was to be read clearly and unambiguously as extending to products defined or obtained by such processes. It therefore endorsed the respective conclusions that it came to in G 2/12. At the same time, however, the Enlarged Board acknowledged that Art. 53(b) EPC did not prohibit this broader understanding of the process exclusion either. Furthermore, the Enlarged Board recognised that, with the introduction of R. 28(2) EPC, the legal and factual situation underlying decision G 2/12 had substantially changed. This amendment constituted a new aspect that had arisen since the EPC was signed which could give reason to believe that a grammatical, and restrictive, interpretation of the wording of Art. 53(b) EPC conflicted with the legislator's aims, whereas a dynamic interpretation could bring a result that diverged from the wording of the law. The Enlarged Board held that the exclusion of products exclusively obtained by means of an essentially biological process was not incompatible with the wording of Art. 53(b) EPC, which did not rule out this broader construction of the term "essentially biological processes for the production of plants or animals". The Enlarged Board concluded that, in view of the clear legislative intent of the contracting states as represented in the Administrative Council and having regard to Art. 31(4) Vienna Convention, the introduction of R. 28(2) EPC allowed and indeed called for a dynamic interpretation of Art. 53(b) EPC. Accordingly, the Enlarged Board abandoned the interpretation of Art. 53(b) EPC given in decision G 2/12 and, in the light of R. 28(2) EPC, held that the term "essentially biological processes for the production of plants or animals" in Art. 53(b) EPC was to be understood and applied as extending to products exclusively obtained by means of an essentially biological process or if the claimed process feature defined an essentially biological process.
In conclusion, the Enlarged Board answered the referral as follows:
"Taking into account developments after decisions G 2/12 and G 2/13 of the Enlarged Board, 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 before1 July 2017 and European patent applications which were filed before that date and are still pending" (see also T 420/19 where the board reiterated this point).
- T 2049/23
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.