Plants are patentable, but to patent a breeding method, there must be a technical step that itself modifies a trait in the plant genome.
The EPO Enlarged Board of Appeal recently gave its decision in joined cases (G02/07 and G01/08) regarding the patentability of plant breeding methods. The outcome of these cases has clarified the EPO's position and should be considered when seeking patent protection in this area of technology.
Mere human intervention, even including technical means to assist in a process of breeding and selection of plants is not enough to confer patentability, but if there is a technical step that by itself introduces a trait into the genome or modifies a trait in the genome of the plant produced, the process is not excluded from patentability.
The introduction or modification of that trait must not be the result of the mere mixing of the genes of the plants chosen for sexual crossing.
A significant aspect of this decision is the approval by the Enlarged Board of an old German Federal Court of Justice definition of term "invention". The definition was adopted in the Rote Taube (Red Dove) case (GRUR 1969, 672) and calls for "a teaching to methodically utilize controllable natural forces to achieve a causal, perceivable result".
It may be noted that the patentability of the product claims (the plants themselves) were not the subject of the referral. Inventions concerning plants have, for historical reasons, been regarded as patentable from the inception of the European Patent Convention and remain so under Rule 27(b) of the EPO 2000 (implementing Article 4(2) of the Biotechnology Directive).
Going forward this decision would appear to limit the patentability of plant breeding methods. However, the EPO has now produced a clear definition of what constitutes human intervention and the scope of the exclusion of plant breeding methods under Article 53(b). This should provide a strong basis for determining the likely patentability for a plant breeding method before expending resources in filing an application at the EPO.
Note that this is the first instance in which the EPO Enlarged Board of Appeal has endorsed the "Rote Taube" definition of an invention. This definition was proposed for the failed Directive of the European Parliament to define patentable computer-implemented inventions. With this endorsement, we may see more of this definition.
Decision of the Enlarged Board of Appeal
The Enlarged Board of Appeal held that:
1. A non-microbiological process for the production of plants which contains or consists of the steps of sexually crossing the whole genomes of plants and of subsequently selecting plants is in principle excluded from patentability as being "essentially biological" within the meaning of Article 53(b) EPC.
2. Such a process does not escape the exclusion of Article 53(b) EPC merely because it contains, as a further step or as part of any of the steps of crossing and selection, a step of a technical nature which serves to enable or assist the performance of the steps of sexually crossing the whole genomes of plants or of subsequently selecting plants.
3. If, however, such a process contains within the steps of sexually crossing and selecting an additional step of a technical nature, which step by itself introduces a trait into the genome or modifies a trait in the genome of the plant produced, so that the introduction or modification of that trait is not the result of the mixing of the genes of the plants chosen for sexual crossing, then the process is not excluded from patentability under Article 53(b) EPC.
4. In the context of examining whether such a process is excluded from patentability as being "essentially biological" within the meaning of Article 53(b) EPC, it is not relevant whether a step of a technical nature is a new or known measure, whether it is trivial or a fundamental alteration of a known process, whether it does or could occur in nature or whether the essence of the invention lies in it.