The EPO Enlarged Board of Appeal determines patentability for plant biotech patents – G 2/12 (“Tomato II”) and G 2/13 (“Broccoli II”) are out

30 March 2015

The Enlarged Board of Appeal (EBA) has now finally decided upon the question whether the exclusion from patentability of essentially biological processes also has an impact on the allowability of claims for products resulting from such processes. The answer is no. Product claims or product-by-process claims for plants or plant material (other than a plant variety) are allowable, regardless if the claimed subject-matter is generated by an (excluded) essentially biological process for the production of plants.

For several years, there has been a long-running story at the EPO featuring the famous "Broccoli" and "Tomato" cases. These cases have provoked the European patent system to clarify the limits of what is actually excluded from patentability according to Art 53(b) EPC, stipulating inter alia that plant varieties and essentially biological processes for the production of plants are excluded.

In late 2010, two EBA decisions were issued G 2/07 (the "Broccoli I" case) and G 1/08 (the "Tomato I" case), clarifying how to distinguish between plant production processes that are excluded from patent protection and those that are not.

These older decisions did not, however, address the question whether the process exclusion in Art 53(b) may have a negative impact on the allowability of product claims covering plants and parts of plants that are produced by an excluded process. This ultimately led to two new referrals to the EBA, G 2/12 and G 2/13, concerning the allowability of claims for products resulting from (excluded) essentially biological processes.

On 25 March 2015, the EBA issued the G 2/12 and 2/13 decisions, and concluded that the exclusion of essentially biological processes for the production of plants in Art 53(b) EPC does not have a negative impact on the allowability of a product claim directed to plants or plant material, such as a fruit or plant part. Furthermore, it does not matter if the product claim is formulated as a product-by-process claim. It is concluded that process features of a product-by-process claim directed to plants or plant material, other than a plant variety, which define an essentially biological process for the production of plants do not render the claim unallowable.

It is further decided that if 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, it does not render a claim directed to plants or plant material, other than a plant variety, unallowable. Hence, it is of no relevance that the protection conferred by the product claim or product-by-process claim encompasses the generation of the claimed product by means of an (excluded) essentially biological process.

Inga-Lill Andersson
European Patent Attorney, Stockholm office

Karolina Wiktorson
Patent Attorney, Stockholm office

30 March 2015