On 17 January 2012, the CDU/CSU, SPD, FDP and Bündnis 90/die Grünen parliamentary parties submitted a joint motion to the German Federal Parliament (Bundestag). This provides for a prohibition on patents for conventionally bred agricultural livestock and plants. The significance of global green biotechnology cannot be easily overestimated. 140 million hectares are taken up by the cultivation of these plants worldwide. While large quantities of genetically modified plants are manufactured and sold in the USA and Asia, the acceptance of such plants is continuing to decline in Europe. One way out of this problem is to produce new non-genetically modified plants. In addition to conventional breeding, the focus is here on more efficient marker-assisted breeding. As with conventional breeding methods, use is made of crossbreeding and selection. The molecular markers mean that the plants generated by crossbreeding are selected more efficiently. After selection, the plants no longer contain the markers, with the result that the plants created are not genetically modified.
Current patenting practice
The EU’s Biotechnology Directive 98/44 aims at strengthening the legal protection of biotechnological inventions. This was implemented in German law in 2005. The Directive was also implemented in the European Patent Convention (EPC) by the European Patent Office. The Directive and the adjusted German and European patent legislation lay down that inventions for animals and plants are patentable provided that the technical teaching of the invention is not limited to a specific animal race or plant variety, which are explicitly excluded from patentability. The justification for the exclusion of plant varieties is that varieties protection provides a complementary property right and there is no need for duplicate protection. There is no such complimentary property right for animal races.
The German Patent and Trademark Office (GPTO) and the European Patent Office (EPO) issue patents for inventions concerning plants and animals on the basis of this EU Directive.
The starting point for the motion is the provision in Art. 53b) second alternative of the EPC, according to which essentially biological processes for the production of plants or animals are excluded. In its decisions in the “Tomato” and “Broccoli” cases dated 9 December 2010, the EPO’s Enlarged Board of Appeals laid down when a process constitutes an essentially biological process that is excluded from patentability.
The authors of the motion now argue that the exclusion in Art. 53b) of the EPC, which only excludes processes for the production of plants and animals from patentability, logically also ought to exclude plants and animals that have been created by such processes.
The current Patent Act protects plant breeders
The German and European patent offices grant patents to inventions that are new, based on an inventive step and capable of industrial application.
Inventions that concern animals or plants are therefore granted a patent if these animals or plants are not obvious on the basis of what is already known and have beneficial properties. The inventor thus makes a contribution and receives the patent that grants him exclusive rights for a limited period of time.
Where genetically modified animals or plants are concerned, this practice is not called into question by the opponents, and instead the motion only concerns the case where the agricultural livestock or plants have been obtained by means of conventional breeding processes. Even if a known process is applied, this does not mean that patentable products with new advantageous properties have not been obtained.
For instance, it has long been known that exposure to radiation can modify the properties of bacteria. If known bacteria are exposed to radiation and a new bacterium is produced that differs from the known bacteria in a non-obvious manner and has beneficial properties, it is patentable. There is no obvious reason why the inventor who uses conventional breeding processes should be denied his reward, i.e. the grant of a patent. This applies in particular if the breeding leads to an agricultural animal that cannot be protected by another intellectual property right in the same way as varieties protection protects agricultural plants.
The opponents of the patenting of plants argue that the exclusion of processes for the production of animals and plants was included in the Patent Act in order not to impede conventional animal and plant breeders. This purpose, as shown below, is also achieved if the present patenting practice is retained. The German Patent Act lays down that the use of a patented plant for the purpose of producing a new plant variety does not constitute a patent infringement (Sec. 11 No. 2a, Patent Act). Accordingly, the Patent Act already takes sufficient account of the plant breeders’ reservations.
The situation is different for animal breeders. The use of the protected animal for breeding purposes constitutes a patent infringement. If agricultural livestock were not patentable, it is not only the use for breeding purposes that would be unrestricted, but also any further use for commercial purposes, with the result that anyone who has bred a new animal would be deprived of rights. There would thus be no incentive whatsoever for the commercial breeding of new agricultural livestock. The German Patent Act, however, limits the patent protection for agricultural livestock (farmer privilege). The patent holder is entitled to the rights to the first generation of agricultural livestock and plants. If the reproduction of this first generation is not for commercial purposes but only serves the farming operations, subsequent generations do not fall under the protection of the patent.
The existing patent legislation thus takes account of the interests of the plant breeders and the farmers and restricts patent protection. A more extensive exclusion of agricultural livestock and plants obtained by conventional breeding processes does not appear to be necessary.
It should be pointed out that in the tomato case (EP1211926B1) the patent process claims were deleted, but claims to the tomatoes obtained by conventional breeding processes were retained. The opponent has requested that the EPO’s Enlarged Board of Appeal address this issue once again. Thus, the suspense remains.
Dr. Thomas Friede, Patent Attorney, Bardehle Pagenberg, Munich