According to Article 53(b) of the European Patent Convention (EPC),
plant varieties and essentially biological processes for the production
of plants, are exempt from patentability.
In late 2010, the Enlarged Board of Appeal of the EPO issued two
decisions concerning what constitutes an "essentially biological
process" (cases G2/07 Broccoli and G1/08 Tomatoes). The
decisions addressed the issue of how much technical intervention is
required to make an essentially non-patentable biological cross-breeding
method patentable. These decisions stated that an essentially
biological method may be patentable subject-matter if it comprises a
technical step which modifies the plant genome in a way that would not
result from mixing of genes via sexual crossing.
Case G1/08 was referred back from the Enlarged Board of Appeal to the
Technical Board of Appeal to decide on the other issues in the case.
However, before Technical Board of Appeal 3.3.04, the patentee filed new
claims relating to the product as such (tomato fruits or tomato fruit
Board 3.3.04 first decided that the product claims did not relate to
plant varieties, with reference to an earlier Enlarged Board of Appeal
decision G1/98 and Rule 26(4) EPC.
However, the amended claims still raised a number of issues for Board
3.3.04, as they still related to an excluded process. First, as
essentially biological processes for the product of plants are not
patentable, might this not have a negative effect on the patentability
of plants or plant material obtained by such methods (for example,
Second, the only way described in the patent to produce the claimed
tomato fruits was an essentially biologically process. Board 3.3.04 were
in doubt as to whether a claim to the tomato fruits was allowable, as
reproducing the claim required an essentially biological process
Third, as the protection provided by a product claim is absolute, a
claim to the tomato fruit itself can prevent others from making those
tomato fruits. While direct claiming of the process would not be
allowed, Board 3.3.04 considered that a product claim as such would be
an attempt to gain indirect protection for the process.
Board 3.3.04 considered that these three issues were not sufficiently addressed in the original Tomatoes case, and has therefore referred questions on these issues to the Enlarged Board of Appeal as Tomatoes II which is pending as G2/12.
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