This decision deals with an appeal against the refusal of an application by the Examining Division.
It contains a reminder of what is to be understood as plant varieties within the meaning of the EPC.
Claim 1 before the Board read (in English translation):
1. Glyphosate tolerant sugar beet plant, characterized in that
a) a DNA fragment can be amplified from the genomic DNA of said sugar beet plant, parts or seeds thereof, using polymerase chain reaction with a first primer having the nucleotide sequence of SEQ ID NO: 3 and a second primer having the nucleotide sequence of SEQ ID NO: 3, wherein the DNA fragments shows at least 95% identity with the nucleotide sequences of SEQ ID NO: 6, and/or
b) a DNA fragment can be amplified from the genomic DNA of said sugar beet plant, parts or seeds thereof, using polymerase chain reaction with a first primer having the nucleotide sequence of SEQ ID NO: 9 and a second primer having the nucleotide sequence of SEQ ID NO: 10, wherein the DNA fragments shows at least 95% identity with the nucleotide sequences of SEQ ID NO: 12, and/or
c) a DNA fragment can be amplified from the genomic DNA of said sugar beet plant, parts or seeds thereof, using polymerase chain reaction with a first primer having the nucleotide sequence of SEQ ID NO: 14 and a second primer having the nucleotide sequence of SEQ ID NO: 16, wherein the DNA fragments shows at least 95% identity with the nucleotide sequences of SEQ ID NO: 17.
In what follows, the Board examines whether this subject-matter is excluded from patentability pursuant to A 53(b).
*** Translation of the German original ***
[2] According to decision G 1/98 [3.1] a plant defined by single recombinant DNA sequences is not an individual plant grouping to which an entire constitution within the meaning of the definition provided by the Community Regulation on Community Plant Variety Rights can be attributed. It is not a concrete living being or grouping of concrete living beings but an abstract and open definition embracing an indefinite number of individual entities defined by a part of its genotype or by a property bestowed on it by that part.
[3] The subject-matter of claim 1 is a sugar beet plant which has been made glyphosate tolerant by incorporation of a CP4-EPSPS-gene within the plant genome. The plant is characterised by at least one of three PCR amplification fragments comprising, entirely or partly, the transgene insert. As the claimed plant is defined only by single recombinant DNS sequences it is not a plant variety according to decision G 1/98.
Therefore, the subject-matter of the claims does not violate the requirements of A 53(b).
To download the whole decision (in German), click here.
The file wrapper can be found here.
2 comments:
The exclusion defined in Article 53(b) was conceived so narrowly as to make it practically irrelevant.
Are you aware of any final decision where the claimed vegetal subject-matter was deemed to be neither too specific (eg: possessing certain specified gene sequences) nor too general (eg: a broad category encompassing a whole group of individual genii, such as "rice") as to run afoul of this disposition? I don't. (I would be happy to be disproved, though.)
The stated purpose of Article 53(b) was to provide a boundary between the plant certificates system(s) (UPOV) and utility patents. Yet, if you look up the literature, you will find many commentators who consider that double protection was possible, if the respective applications are properly drafted.
I think it is worth mentioning to patent specialists that a "variety" invariably means "a registered and hence protected group of plants having stable properties". The thing to get used to is that where we have inventions that are not protected, such a concept does not exist in the plant variety world.
Where we are used to a double protection principle (you may have a patent and a utility model on the same invention), that is not permitted in the plant variety world.
Where we have a research and private use exemption, the plant variety world has a "farmer's privilege", which means that the farmer is permitted to retain an amount of seed of the crop for sowing the next year. So, it is a commercial exemption.
Seed companies (which are now biotechnology companies) obviously have fought this by making the seeds barren.
Finally I have observed in diplomatic conferences in this field that whereas most of the official delegations are composed of public servants from the various states represented, those from the US have a contingent of industry representatives.
George Brock-Nannestad
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