Additional lessons learned from Tomato II and Broccoli II

As the interested circles are certainly already well aware of, the Enlarged Board held in G 2/12 and G 3/13 that the exclusion of essentially biological processes for the production of plants under the provisions of the European Patent Convention does not preclude the grant of a patent claim directed to a plant obtained in such a process; see Catchword 1. This is also true if (i) the patent claim is drafted as a product-by-process claim and (ii) the claimed plant can only be produced in an essentially biological process; see Catchword 2.

What is however additionally interesting to note is that the Enlarged Board indirectly encourages applicants to file patent applications for plants, which are obtained in essentially biological processes, with the European Patent Office. At VIII.2(6)(d) of the Reasons, the Enlarged Board discusses national patentability exclusions of plants which are generated by an essentially biological process. Some of these national patentability exclusions are narrower than the Enlarged Board’s ruling. Accordingly, applicants who intend to obtain a patent for such plants learn that the best way of doing so is by prosecuting their patent applications at the European Patent Office.

Another lesson learned is that the Enlarged Board seems to interpret the scope of protection of a product-by-process claim in a broad manner. The Enlarged Board actually states:

“As pointed out by the referring Boards, by virtue of Article 64(2) EPC:  (a)  the protection conferred by a process claim extends to the products directly obtained by such process,  (b)  the protection conferred by a product claim comprises using as well as producing the product and  (c)  the product claimed in terms of a product-by-process claim extends to products which are structurally identical to the claimed product but which are produced by a different method.” (at VIII.2(6)(b) of the Reasons; emphasis added)

It is seen from (c) that the Enlarged Board does not limit the scope of protection of a product-by-process only to products which are obtained by the process steps described in that claim. This seems to be different to at least some national civil courts in Europe which hear patent infringement cases.

While the statement of the Enlarged Board is at best an obiter dictum and not binding for any national court, it might become relevant once the Unified Patent Court is operating in Europe. Namely, according to Article 24(1)(c) of the Agreement on a Unified Patent Court, one source of law for procedures before that Court shall be the European Patent Convention. This source of law might well include the case law under the European Patent Convention, including the case law of the Boards of Appeal and especially of the Enlarged Board of Appeal of the European Patent Office. As such, Tomato II and Broccoli II might become relevant in the future when product-by-process claims are litigated before the Unified Patent Court.

_{Copyright by Dr. Christian Köster}