Fruitful outcome for patentees in the latest ‘Broccoli’ and ‘Tomato’ cases

The recently-issued Enlarged Board of Appeal (EBA) decisions on two related referrals – “Tomatoes II” (G2/12) and “Broccoli II” (G3/12) – clarify that the exclusion from patentability of essentially biological processes for the production of plants does not extend to product claims directed to the corresponding plants or plant material.

This is good news for patent owners who, following the earlier EBA decisions in “Broccoli I” (G2/07) and “Tomatoes I” (G1/08), have been unable to obtain European patents for essentially biological processes for generating plants, if the processes lack a technical step that modifies the genome of the plant.

The two more recent decisions confirm that plants or plant material generated by a method that includes an essentially biological process, or which, at the filing date, could only have been generated by an essentially biological process, are not excluded from patentability under Article 53(b) EPC.

Interestingly, the EBA has taken a very narrow interpretation of Article 53(b), and the exclusion has not been extended beyond claims to essentially biological processes per se. The latest decisions clarify that it is irrelevant that the protection conferred by the plant product claim encompasses generation of the claimed plant product by means of an essentially biological process that is excluded from patentability.

It can be concluded from these decisions that European patent protection can be secured for plant products obtained by an unpatentable essentially biological process, provided that the claims meet the other criteria for patentability (such as basis for the claim language in the application as filed, novelty and inventive step) and the plant product is not a plant variety per se. 

Importantly, it was established in G1/98 that claims which embrace plant varieties but do not claim specific varieties individually are not considered to be directed to a plant variety per se and are not excluded under Article 53(b).