In a recent decision, a Board of Appeal of the European Patent Office (EPO) has referred new questions on a point of law to the EPO Enlarged Board of Appeal, i.e. the EPO “court” of highest instance.

While these questions regard the allowability of a claim relating to a particular type of tomato, the underlying point of law has ramifications that extend well beyond the specific field of technology of transgenic plants. In fact, the underlying point of law is so important that, in a communication of 31 January 2013, the Enlarged Board has indicated that it will continue with the proceedings now pending before it and answer the questions referred to it, despite the fact that, in the meantime, the opponent who had questioned the allowability of the claims has withdrawn their opposition.

This is not the first time this matter has come before the Enlarged Board. In the previous round, the Enlarged Board had decided that a claim to a process for producing plants (e.g. tomatoes), such process containing or consisting of the steps of sexually crossing the whole genomes of the plants and of subsequently selecting the resulting plants, is not patentable under the European Patent Convention (EPC) because it is an “essentially biological” process for making a plant.

The case had been remitted to the lower-instance Board of Appeal, where it proceeded on the basis of claims which no longer covered the processes for making the special tomatoes of that invention, but which still contained claims to the special tomatoes themselves. It is noteworthy that the claimed special tomatoes can be manufactured by way of the very process which the Enlarged Board had found not to be patentable.

If the patent were now to be maintained with the claims to the special tomatoes, the arguable implication would be that third parties could not use the process for making such tomatoes in the territory where the patent is in force, even though the process for making them is no longer claimed.

It therefore becomes immediately clear that the answers to the questions now referred to the Enlarged Board may have an impact well beyond the tomato field, and affect all those inventions where, for various reasons, a certain process cannot be claimed but in the end third parties cannot use it in any case because the resulting product claim has been allowed by the EPO.

On the other hand, it could seem unfair to deny the allowabilty of the product claim (if the product is novel and inventive) just because the process for making the product could not be patented for reasons of novelty and inventive step of the process (indeed, the traditional prohibition contained in the EPC regarding the patenting of microbiological processes is not because the EPC legislator thinks that such processes can never be novel or inventive).

The questions now referred to the Enlarged Board are three in number, and read as follows:

“1. Can the exclusion [from patentability] of essentially biological processes for the production of plants … 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 … 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 [from patentability]?”

It will be important to follow the developments of this case and to carefully analyze the Enlarged Board’s answers to the above questions, as they may greatly influence the possibility both of obtaining product protection for patentees and of implementing unclaimed technologies for third parties.

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