3.3.3
Product claims for plants or plant material 

In the consolidated cases G 2/12 and G 2/13 (OJ 2016, A28 and A29) the Enlarged Board was concerned with the question whether the exclusion of essentially biological processes for the production of plants in Art. 53(b) EPC had a negative effect on the allowability of product claims or product-by-process claims directed to plants or plant material (such as a fruit or plant parts) which are directly obtained and/or defined by an essentially biological process. It concluded that it did not.

The Enlarged Board applied the various methodical lines of interpretation set out in Art. 31 and 32 of the Vienna Convention on the Law of Treaties. None of these led the Enlarged Board to conclude that the term "essentially biological processes for the production of plants" extended beyond the processes to products defined or obtained by such processes. This result was confirmed when the preparatory work of the EPC was taken into account as a supplementary means of interpretation.

The Enlarged Board also examined whether considerations had arisen since the Convention was signed which might give reason to believe that a literal interpretation of the relevant provision would conflict with the legislator's aim. However, it could not see why the original intention of the legislator in drafting Art. 53(b) EPC was no longer justified, just because new plant breeding techniques were available today.

The Enlarged Board considered whether allowing patenting of a product claim or a product-by-process claim for a plant or plant material that is obtained by a means of an essentially biological process could be regarded as a circumvention of the process exclusion. It found that it could not, referring to the clear wording of Art. 53(b) EPC. It warned that broadening the scope of the process exclusion to the extent that it included products obtained by essentially biological processes for the production of plants would introduce an inconsistency in the system of the EPC, as plants and plant material other than plant varieties were generally eligible for patent protection.

On the question whether it was of relevance that the protection conferred by the product claim encompassed 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 Enlarged Board highlighted the distinction between the requirements for patentability and the extent of protection. Whether a product claim or a product-by-process claim was patentable was to be examined irrespective of the extent of protection that is conferred by it after grant.

The Enlarged Board emphasised that its judicial decision-making powers did not extend to the ethical, social and economic aspects raised in the general debate, as it had no mandate to engage in legislative policy.

The questions of law referred to the Enlarged Board of Appeal were answered as follows:

1. The exclusion of essentially biological processes for the production of plants in Art. 53(b) EPC does not have a negative effect on the allowability of a product claim directed to plants or plant material such as a fruit (G 2/12) or plant parts (G 2/13).

2. The fact that the process features of a product-by-process claim directed to plants or plant material other than a plant variety define an essentially biological process for the production of plants does not render the claim unallowable (G 2/13). The fact that 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 does not render a claim directed to plants or plant material other than a plant variety unallowable (G 2/12, G 2/13).

3. In the circumstances, it is of no relevance 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 (G 2/12, G 2/13).

In its decision T 83/05 of 10 September 2015 the board applied G 2/13. Claim 1 of the main request was directed to an edible Brassica plant produced according to a method of crossing and selecting. Claims 2 and 3 were directed to an edible portion and to the seed of a broccoli plant produced by a method defined in the same manner as in claim 1. Claims 4 and 5 were directed to a broccoli plant and a broccoli inflorescence. The board remitted the case to the department of first instance with an order to maintain the patent on the basis of claims 1 to 5 of the main request, a description yet to be adapted and figures 1 to 5 as granted.

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