Tomatoes and Broccoli – New Political Twists and Turns

• English

As reported previously, in March 2015, the Enlarged Board of Appeal of the European Patent Office handed down its decision in the consolidated cases G 2/12 (“Tomato II”) and G 2/13 (“Broccoli II”). It was held in these decisions that the grant of a patent claim directed to a plant obtained in essentially biological processes is possible under the European Patent Convention. Practitioners might have liked this ruling – politicians apparently not.

On 8 November 2016, a notice from the European Commission on certain articles of the EU Directive on the legal protection of biotechnological inventions (Directive 98/44/EC) was published in the Official Journal of the European Union (2016/C 411/03). It is evident that the European Commission dislikes the assessment of the Enlarged Board of Appeal of the European Patent Office as can be seen from the following statement in the notice:

 “In March 2015, the Enlarged Board of Appeal (‘the Enlarged Board’) of the European Patent Office (‘the EPO’) decided that products derived from using essentially biological processes might be patentable, even if the process used to obtain the product (i.e. selecting and crossing the plants) is essentially biological and thus not patentable. However, the patentability of such products runs into potential conflict with the legal protection provided to plant varieties under EU plant variety legislation as regards access to genetic resources.”

 In the notice, the European Commission adopts the standpoint that products derived from essentially biological processes should be excluded from patentability and concludes as follows:

 “The Commission takes the view that the EU legislator's intention when adopting Directive 98/44/EC was to exclude from patentability products (plants/animals and plant/animal parts) that are obtained by means of essentially biological processes.”

 It is further noteworthy that in its practice the European Patent Office applies the Directive 98/44/EC in examination and opposition procedures as stipulated in Rule 26(1) of the European Patent Convention. That is, Directive 98/44/EC is used as a supplementary means of interpretation when examining European patent applications and European patents.

 On 12 December 2016, the European Patent Office released a news item stating that following the political developments and in view of the potential legal consequences the Office has decided to stay all proceedings in examination and opposition cases in which the invention is a plant or animal obtained by an essentially biological process.

 The Office also informed the public that the effect of the Commission Notice for the examination practice in the European Patent Office including any necessary follow-up measures is currently under discussion with the representatives of the member states of the European Patent Organization. It was further announced that should the member states of the European Patent Organization follow the interpretation offered by the European Commission Notice, the European Patent Office will implement their decision.

 So it’s Enlarged Board of Appeal vs. European Commission. Let’s wait and see how many rounds this bout will have. We will keep you posted.