Following the issuance of decision G2/07 in
connection with the "Broccoli" patent, which discussed whether plant
breeding methods were excluded from patentability as essentially biological
processes for the production of plants, the Technical Board of Appeal in
proceedings T83/05 have now referred further questions to the Enlarged Board of
Appeal, relating to whether the exclusion of Article 53(b) extends to the
products of essentially biological processes.

The issue of whether the exclusion of Article 53(b)
prohibits the allowability of the patent's product claims was only raised during
appeal proceedings and not during opposition proceedings.  However, as the
respondent had consented to the examination of the objection and as the
objection was relevant to the maintenance of the patent, the Technical Board of
Appeal decided to consider it.  Further, similar questions had been referred to
the Enlarged Board of Appeal regarding the "Tomato" case, which are
currently pending as case G2/12.

The Technical Board of Appeal suggested that the
product claims were not excluded under Article 53(b), as the plants were not
defined by a multitude of characteristics resulting from a given genotype or
combination of genotypes but only by a particular trait, which is not
sufficient to define a plant variety without providing further information
about the genotype.

However, the essentially biological process claims
of the application would cover plants which are produced by the excluded
process.  Further, the subject-matter of a product-by-process claim extends to
products which are structurally identical to the products produced by the
process but are produced by a different process, though no alternative processes
are disclosed in the application.  A product claim generally provides protection
for the process of making the product and so the product claims discussed in
this case would protect any act of making the claimed plants, including those
processes excluded from patentability.

In response to this argument, the respondent raised
the possibility of including a disclaimer to waive a part of the prerogatives
of the owner of a product patent, namely the essentially biological process for
producing the plant itself.  This disclaimer was not deemed to be a usual
disclaimer (which excludes part of the subject-matter defined in the claim) and
the Technical board of Appeal indicated that it was doubtful whether such a disclaimer
would be allowed.

The questions to be referred are:

1.  Can the
exclusion of essentially biological processes for the production of plants in
Article 53(b) EPC 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 Article 53(b) EPC?

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 Article
53(b) EPC, is it possible to waive the protection for such generation by "disclaiming"
the excluded process?

This
report comes from European Patent Attorneys at WP
Thompson & Co., 55 Drury Lane, London UK.  Further details and
commentary can be obtained from Gill Smaggasgale,
a partner at the firm.

Image of Brassica oleracea var. italica, Location: Maui, Foodland Pukalani (above) by Forest & Kim Starr, from the Wikipedia Commons under the Creative Commons Attribution 3.0 Unported license.