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.