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| EBA member Fiona suddenly felt that a broccoli would cast a shadow on her holidays |
The present case was the one who gave rise to the “Broccoli” decision G 2/07 of the EBA of appeal (EBA) on how the expression “essentially biological” was to be understood.
When summoned to oral proceedings (OPs), the patent proprietor replaced all its requests on file. The new requests did not contain method claims. Claim 1 of the main request read:
1. An edible Brassica plant produced according to a method for the production of Brassica oleracea with elevated levels of 4-methylsulfinylbutyl glucosinolates, or 3-methylsulfinylpropyl glucosinolates, or both, which comprises:a) crossing wild Brassica oleracea species selected from the group consisting of Brassica villosa and Brassica drepanensis with broccoli double haploid breeding lines;b) selecting hybrids with levels of 4-methylsulfinylbutyl glucosinolates, or 3-methylsulfinylpropyl glucosinolates, or both, elevated above that initially found in broccoli double haploid breeding lines;c) backcrossing and selecting plants with the genetic combination encoding the expression of elevated levels of 4-methylsulfinylbutyl glucosinolates, or 3-methylsulfinylpropyl glucosinolates, or both; andd) selecting a broccoli line with elevated levels of 4-methylsulfinylbutyl glucosinolates, or 3- methylsulfinylpropyl glucosinlates [sic], or both, capable of causing a strong induction of phase II enzymes, wherein molecular markers are used in steps (b) and (c) to select hybrids with genetic combination encoding expression of elevated levels of 4-methylsulfinylbutyl glucosinolates, or 3-methylsulfinylpropyl glucosinolates, or both, capable of causing a strong induction of phase II enzymes.
On November 8, 2011, second OPs took place in the “Tomato” case T 1242/06. While, similarly to the present case, the patent proprietor in case T 1242/06 also took the EBA decision into account by deleting all process claims, the opponent nevertheless maintained that the proprietor’s requests, which now only contained product claims, still did not comply with the requirements of A 53(b). This led to another referral to the EBA.
Third-party observations were received in the present case on November 1, 2011.
One of the opponents asked the Board to stay the proceedings in order to wait for the questions to be referred to the EBA and whether the EBA would “accept” them.
The patent proprietor then pointed out that the new submission of the opponent seemed to introduce a fresh ground of opposition into the appeal proceedings, i.e. an objection under A 53(b) against product claims. If the EBA should find that the second referral in case T 1242/06 inadmissible, the patent proprietor would oppose the admission of this new ground into the proceedings. Otherwise, however, it would agree to it.
On May 31, 2012, the board in case T 1242/06 handed down a second interlocutory decision in which it referred the following questions of law to the EBA:
1. Can the exclusion of essentially biological processes for the production of plants in A 53(b) have a negative effect on the allowability of a product claim directed to plants or plant material such as a fruit?2. In particular, is a claim directed to plants or plant material other than a plant variety allowable even if the only method available at the filing date for generating the claimed subjectmatter is an essentially biological process for the production of plants disclosed in the patent application?3. Is it of relevance in the context of questions 1 and 2 that the protection conferred by the product claim encompasses the generation of the claimed product by means of an essentially biological process for the production of plants excluded as such under A 53(b)?
The referral is pending as case G 2/12.
When invited to clarify its requests, the patent proprietor gave its unconditional consent to the examination of the objection raised under A 53(b) against the product claims of its requests. It requested that this objection be admitted into the proceedings and that the board refer anew questions of law to the EBA, some of which were identical to those asked in case G 2/12.
After some hesitation, the Board decided to admit the new objection under A 53(b) and then pursued:
A 53(b) – substantive aspects
[13] In the area of plant breeding, A 53(b) provides for two exceptions from patentability. It prohibits the patenting of, on the one hand, plant varieties and, on the other hand, essentially biological processes for the production of plants.
[14] In the second interlocutory decision in case T 1242/06 the present board, in a different composition, considered both of these exceptions when assessing the patentability of product claims directed to certain tomato fruits. While the board found the exclusion of plant varieties not to be applicable, it considered that the process exclusion in A 53(b) might well have an impact on the allowability of the claimed products and decided to refer further questions of law concerning this latter issue to the EBA.
[15] In the present case, the subject-matter of claim 1 of the [patent proprietor’s] main request […] is defined as an edible Brassica plant produced according to a certain method for the production of Brassica oleracea with elevated levels of certain glucosinolates. The method features of this product-by-process claim include steps of crossing and selecting plants. Claims 2 and 3 which are directed to an edible portion and the seed of a broccoli plant contain identical method features. Claims 4 and 5 of the main request […] define the claimed broccoli plant or inflorescence inter alia by the product-by-process feature of crossing broccoli double haploid breeding lines with Brassica villosa or Brassica drepanensis.
[16] For the same reasons as set out in great detail in the second interlocutory decision in case T 1242/06 [25-39], the board considers that the plants or parts of plants claimed in the present case do not fall under the exclusion of plant varieties as stipulated in A 53(b) and defined by R 26(4). Apart from the fact that these plants and parts of plants are, in view of the process features of the claims […], defined as the result of crossing specific plant species, they are not further defined by a multitude of characteristics resulting from a given genotype or combination of genotypes (see decision G 1/98 [3.1]), but, directly or indirectly, only by a particular trait, i.e. an increased level of specific glucosinolates. A single trait is, however, in general not sufficient to define a plant variety without providing, apart from an indication of the species, further adequate information about the actual genotype of the plant grouping. The exclusion of plant varieties does therefore not apply in the present case. None of the [opponents] has argued otherwise.
[17] There is nevertheless, similarly to case T 1242/06, a second issue which needs to be addressed, namely the question as to whether the process exclusion contained in A 53(b) has a negative impact on the allowability of the [patent proprietor’s] product claims. In the board’s view, at least the method steps referred to in claims 1 to 3 of the main request for the definition of the claimed plants and plant parts […] have to be regarded as essentially biological processes for the production of plants and would fall, if claimed as such, under the process exclusion of A 53(b). These claims therefore cover plants and plants parts which are produced by an excluded process. The board is fully aware that according to the established case law the subject-matter of a product-by-process claim is not limited to products actually produced by the relevant process but also extends to products which are structurally identical to such products and which are produced by a different process (see decisions G 1/98 [4]; T 219/83 [10]). However, neither the patent application as originally filed nor the patent appears to disclose any method for the production of the claimed plants and plants parts which does not include steps of crossing and selection.
[18] In view of the principle of absolute product protection (see decision G 2/88 [5]), a claim to a product provides the patent proprietor with protection that generally encompasses the protection provided by a patent claim for the process of making the product (see decision G 2/06 [25]). If the product claims were allowed in the present case, any act of making the claimed Brassica and broccoli plants or plant parts would in principle fall under the prerogative of the patent proprietor. This would have the consequence that the proprietor could prevent others from carrying out the breeding method taught in the description of the patent and referred to in the claims, although this method might be regarded as an essentially biological process for the production of plants and excluded per se from patentability under A 53(b).
[19] When confronted with a similar situation in case T 1242/06, this board in a different composition expressed serious concerns about the allowability of product claims directed to plant material obtained by means of an essentially biological breeding process. It considered that such claims might de facto frustrate the legislator’s intentions in framing the process exclusion and make the circumvention of the exclusion in many cases a matter of skilful claim drafting, thereby diminishing the consistency and persuasiveness of the legislative framework of the EPC as regards patentable subject-matter. In view of these concerns, the board considered it necessary to refer further questions of law to the EBA.
[20] The board in its present composition fully endorses the detailed analysis of the relevant issues in the second referral decision in case T 1242/06. Points [40] to [66] of the reasons of that decision are therefore expressly incorporated into the present decision and form part of it. The board is aware of the comments made by the President of the EPO and by several amici curiae in the pending referral G 2/12. However, since none of the parties in the present proceedings has relied on these comments in detail or requested that they be considered at this stage, i.e. in the context of a further referral decision, the board believes it neither necessary nor appropriate to expand on the analysis above.
Referral under A 112(1)
[21] The answer to the above question as to whether the process exclusion contained in A 53(b) has a negative impact on the allowability of the [patent proprietor’s] product claims is decisive for the present appeal. It would be clearly inappropriate for the board to decide this issue on its own before the EBA has responded to the referred questions in case G 2/12. The board can therefore either stay the proceedings or refer again questions of law to the EBA. In view of the following considerations the board opts for the second alternative.
[22] All the parties explicitly requested a further referral. Such a referral will provide them with the opportunity to address the EBA on a very important legal issue which is decisive for the outcome of the present case. They may thus put forward their own arguments and emphasise supplementary aspects, thereby enriching the basis on which the EBA will take its decision. Furthermore, in view of the [patent proprietor’s] pending claim requests, the present case contains relevant additional aspects which can be integrated into the referral by formulating supplementary questions of law (see points [24] to [28] below). Finally, recent developments in case T 1242/06 and in the pending referral G 2/12, i.e. the withdrawal of its opposition by [the opponent] and the repeated requests by the proprietor for termination of the proceedings, raise the possibility that that case may end without a decision on the merits. This strongly speaks against a stay of the proceedings in the present case.
[23] All the parties were of the opinion that the same questions as were referred in the second interlocutory decision in case T 1242/06 should be reiterated in the present referral decision. The board agrees in principle. It considers that, for the reasons set out above […], an answer to these questions is required according to A 112(1). A slight modification of question 1 is, however, necessary in order to reflect the fact that in the present case the proprietor’s claims are directed to plants and certain plant parts (seed, edible portion, inflorescence) but not to fruits.
[24] The parties have furthermore requested the referral of additional questions of law in order to allow the EBA to address the decisive issue in a comprehensive manner. In the board’s view, the present case does indeed present additional aspects which should be taken into account in formulating the questions to be referred. However, this does not mean that all the additional questions proposed by parties can or need to be referred to the EBA under A 112(1).
[25] Two of the questions proposed by the parties […] address the issue that all the [patent proprietor’s] claims define the products by process features. This circumstance can be of importance when answering the question whether and to what extent the process exclusion in A 53(b) has a negative impact on the allowability of product claims. The board therefore considers it appropriate to incorporate the issue into question 2 of the present referral.
[26] Question 4 filed by the [patent proprietor] […] raises the further issue of the possibility of a specific kind of disclaimer should the process exclusion affect the allowability of product claims. This issue is of importance in the context of the claims of the [patent proprietor’s] auxiliary request I, which all contain disclaimer clauses such as “wherein the claim does not encompass an essentially biological process for producing [the plant, the portion of a plant, the seed of the plant or the inflorescence]”.
[27] The board does not understand the disclaimer clauses in the [patent proprietor’s] auxiliary request I as intended to be a usual disclaimer, i.e. to exclude part of the subject-matter defined in the claim (see the definition provided in decision G 1/03 [2]. The wording of the clauses indicates that the [patent proprietor] does not intend to disclaim all plants or plant parts that are produced by an essentially biological process. Rather the [patent proprietor] appears to seek to waive a part of the prerogatives of the owner of a product patent which encompass the right to prohibit others from producing the claimed product in any manner. The possible effect of the [patent proprietor’s] proposed disclaimer is that producing the claimed product by an essentially biological process could no longer be prohibited.
[28] It is doubtful whether European patent law allows such a disclaimer or waiver. The board is not aware of case law dealing with this specific issue. When the EBA considered possible conflicts between the requirements of A 123(2) and (3) in its decision G 1/93, it considered that there was no basis for the so-called “footnote solution” which had been used in German case law and consisted in a statement that an undisclosed feature remaining in the claim represented an inadmissible extension from which no rights could be derived (see point [6] of the reasons). The provisions of the EPC did not envisage or allow a statement to be included in the description of a particular patent, qualifying the rights which may be derived from the presence of a particular technical feature in a claim of that patent. These conclusions, albeit made in a context different from the present one, might be interpreted as pointing to a general unallowability of disclaimers or waivers of rights derived from a European patent. The board nevertheless sees some justification in the [patent proprietor’s] argument that the proposed disclaimer/waiver could solve the conflict between the patentability of plants (other than plant varieties) and the exclusion of essentially biological processes for the production of plants. The board has therefore decided to formulate a corresponding question of law in the present referral.
[29] None of the other questions proposed by the parties will be referred to the EBA. […]
The following questions are referred to the EBA for decision:
1. Can the exclusion of essentially biological processes for the production of plants in A 53(b) have a negative effect on the allowability of a product claim directed to plants or plant material such as plant parts?2. In particular:(a) Is a product-by-process claim directed to plants or plant material other than a plant variety allowable if its process features define an essentially biological process for the production of plants?(b) Is a claim directed to plants or plant material other than a plant variety allowable even if the only method available at the filing date for generating the claimed subject-matter is an essentially biological process for the production of plants disclosed in the patent application?3. Is it of relevance in the context of questions 1 and 2 that the protection conferred by the product claim encompasses the generation of the claimed product by means of an essentially biological process for the production of plants excluded as such under A 53(b)?4. If a claim directed to plants or plant material other than a plant variety is considered not allowable because the plant product claim encompasses the generation of the claimed product by means of a process excluded from patentability under A 53(b), is it possible to waive the protection for such generation by “disclaiming” the excluded process?
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