The Word is Out: Patenting Plant Breeding Methods

The EPO Enlarged Board of Appeal rendered its decision on the patentability of breeding methods (see our blog: Patenting Tomatoes and Broccoli) in the cases G 02/07 and G 01/08 making the patentability of breeding methods harder if not impossible.

A brief update on the background of the case. The two patents in suit relate to breeding methods of tomatoes and broccoli. The Broccoli Patent, EP 1069819[1], was granted in 2002, the Tomato Patent, EP 1211926, in 2000. The method claimed in the broccoli case is about selectively increasing the level of a potentially anti carcinogenic substance in broccoli plants. Relevant genes on the broccoli genome were located by genetic markers. Broccoli lines containing the desired genes are selected by the means of this markers and used in (conventional) plant breeding. A similar method of breeding tomatoes with reduced water content has been applied for patent protection in the Tomato case. The EPO deemed both processes of marker-assisted selection as a technical process and therefore patentable.

Both patents have been opposed by competitors through opposition (remarkably by companies that file these type of patents themselves) before the EPO Boards of Appeal claiming that the selection processes were essentially biological by the means of EPC Art. 53 (b) and therefore excluded from patentability in general. While trying to define what is meant by an “essentially biological process” the boards of appeal found the Biotech Directive Art. 2 (2) as to be self-contradictory in its wording: “On the one hand, only processes which consist entirely of natural phenomena are considered to be essentially biological processes for the production of plants. On the other hand, crossing and selection are given as examples of natural phenomena. This appears to be self-contradictory to some extent since the systematic crossing and selection carried out in traditional plant breeding would not occur in nature without the intervention of man.”

Therefore defining what is meant by an “essentially biological process” in EPC Art. 53 (b) was referred to the EPO Enlarged Board of Appeal.

The main question for the Enlarged Board of Appeal to answer was whether the whole breeding process could be coined as to be technical by just adding an additional feature of a technical nature (namely the marker assisted selection). In our earlier blog entry, we have argued, that merely using technical tools in conventional plant breeding could never lead to a technical nature of the whole process. We have compared it to using a microscope for breeding purposes. The Enlarged Board argues similarly, but substantiates this argument much deeper with the historical development of the exception provided by EPC Art. 53 (b). From a historical point of view the exception was introduced to exclude from patentability the kind of plant breeding processes which were conventional methods for the breeding of plant varieties of that time. Certainly the marker assisted selection had not been a conventional method of plant breeding of that time. But that does not matter, because the underlying concept of selecting varieties by identifying their desired genetic traits suitable for the given breeding purposes by using technical tools and other forms of human inventions was already common. The innovation of selection methods does not change that fact, although, to make it abundantly clear, they may perfectly well be patented in themselves apart from the biological process in which they are used.

The decision of the EPO Enlarged Board of Appeal is to be welcomed. It keeps the spheres of patent protection and plant varieties protection apart in an appropriate way. An overlapping protection (by patent law rather than existing plant breeding laws) would harm the patent system by confusing its application requirements to a thicket which even professionals could hardly disentangle.

Stephan Dorn, Human Technology Centre (HumTec) RWTH Aachen (Germany)

[1] See for the patent, background and opposition arguments

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