EPO Decisions G2/07 and G1/08: Patentability of claims defined by an essentially biological breeding process

The EPO's Enlarged Board of Appeal (EBA) issues an important Decision on the scope of the exclusion to patentability of claims covering "essentially biological processes".

By Kerry Rees
December 2010 - The issue addressed by the EBA was the correct interpretation of the term "essentially biological processes for the production of plants and animals" used in the European Patent Convention (EPC) to exclude such processes from patentability. The EBA decided that claims to a process for the production of plants involving sexually crossing whole plant genomes, and the subsequent selection of plants, is not patentable, regardless of the degree of human intervention in the breeding process.

Specifically, the EBA decided that:

• The mere inclusion of a technical step which serves to enable or assist the performance of the steps of sexually crossing a whole genome or of subsequently selecting plants does not override the exclusion from patentability.
• The use of technical devices or means, such as genetic markers, which are patentable per se, in an essentially biological process does not render the process patentable.
• Processes for producing plants by inserting or modifying a trait in the genome using genetic engineering does not rely on sexual crossing and may therefore be patentable. In such cases, the sexual crossing and selection steps should not be in the claims.

Background

Rule 26(5) EPC excludes from patentability claims covering "essentially biological processes for the production of plants or animals". To date the EPO has not given any useful guidance on how to interpret this exclusion.

Historically, the EPO has held that the use of marker genes to select particular plant characteristics to be a technical process and therefore patentable. In view of this, the EPO granted EP1069819 (broccoli patent) directed to a method of increasing the level of anticarcinogenic substances in broccoli plants by locating the relevant genes in the broccoli genome with genetic markers and selecting plant lines having high concentrations of the substance for plant breeding. Similarly, EP1211926 (tomato patent) was granted and is directed to a method of breeding tomatoes with reduced water content and to tomato plants produced by the method.