Patentability of plants
Tomato patent back before EPO’s Enlarged Board of Appeal
By Sophie Mosca | Tuesday 05 June 2012
Is a tomato patentable if it results from a conventional selection process that includes innovative techniques, such as biological markers? That is the question referred to the Enlarged Board of Appeal of the European Patent Office (EPO).
At the heart of this case, which concerns Unilever’s challenge to the patent held by the state of Israel on the production of a type of tomato with reduced water content, used to make ketchup, lies the extremely sensitive question of the patentability of plants and animals.
After issuing a ruling, in December 2010, on the non-patentability of techniques used to select a trait that can be borne by different varieties of plants, the matter has been referred back to the Enlarged Board of Appeal by the Technical Board of Appeal specialised in biotechnology matters. This time, the case concerns the question of the product of such processes. While the Enlarged Board has clarified that this type of process is excluded from the scope of the European patent, unlike what is practiced in the United States for example, it will have to establish whether the exclusion of essentially biological processes for plant production may influence the admissibility of claims concerning the resulting plant product.
This second referral is possible since a European patent may be appealed on the basis of the invention or the results of the invention.
The referral to the Enlarged Board is not surprising since the intention was clearly expressed during the oral proceedings, on 8 November 2011, by the Technical Board of Appeal in charge of the case. Referrals may be made to this higher body by a Technical Board of Appeal or by the EPO president, to ensure uniform application of the law or if a legal issue of fundamental importance is raised. The decision is not expected to be handed down for at least 18 months and another procedure under way – the broccoli case - may have to be interrupted pending the decision in the tomato case.
Directive (98/44/EC) on the legal protection of biotechnological inventions prohibits in principle the patenting of seed, plants and the selection of animals, except where genetic manipulation is involved. However, the EPO has authorised patents for certain varieties of plants obtained by conventional breeding techniques, holding that the use of biological markers introduces a technological innovation in the selection process for several varieties rather than just one. The December 2010 decision by the Enlarged Board of Appeal struck down this ‘case law’. On 10 May, the European Parliament adopted a resolution urging the EPO and the Commission to exclude from the scope of patents conventional plant and animal breeding processes, as well as the resulting products (see