Broccoli (G 2/07) and Tomatoes (G 1/08): the decision is in

tytoc collie reported in a post dated 11 June 2007 of a referral having been made to the EPO Enlarged Board of Appeal (G 2/07) on the subject of whether a process involving crossing and selection of broccoli could be patentable. Another referral was then made relating to a similar type of invention relating to crossing and selection of tomatoes (G 1/08). Now, after a mere three and a half years the Enlarged Board, having combined the two referrals, have issued decisions relating to both.

The questions raised in respect of the broccoli referral were:

1. Does a non-microbiological process for the production of plants which contains the steps of crossing and selecting plants escape the exclusion of Article 53(b) EPC merely because it contains, as a further step or as part of any of the steps of crossing and selection, an additional feature of a technical nature?

2. If question 1 is answered in the negative, what are the relevant criteria for distinguishing non-microbiological plant production processes excluded from patent protection under Article 53(b) EPC from non-excluded ones? In particular, is it relevant where the essence of the claimed invention lies and/or whether the additional feature of a technical nature contributes something to the claimed invention beyond a trivial level?

The questions raised in respect of the tomatoes referral were:

1. Does a non-microbiological process for the production of plants consisting of steps of crossing and selecting plants fall under the exclusion of Article 53(b) EPC only if these steps reflect and correspond to phenomena which could occur in nature without human intervention?

2. If question 1 is answered in the negative, does a non-microbiological process for the production of plants consisting of steps of crossing and selecting plants escape the exclusion of Article 53(b) EPC merely because it contains, as part of any of the steps of crossing and selection, an additional feature of a technical nature?

3. If question 2 is answered in the negative, what are the relevant criteria for distinguishing non-microbiological plant production processes excluded from patent protection under Article 53(b) EPC from non-excluded ones? In particular, is it relevant where the essence of the claimed invention lies and/or whether the additional feature of a technical nature contributes something to the claimed invention beyond a trivial level?

The Enlarged Board has, in both decisions G 2/07 and G 1/08, answered the questions as follows:

1. A non-microbiological process for the production of plants which contains or consists of the steps of sexually crossing the whole genomes of plants and of subsequently selecting plants is in principle excluded from patentability as being "essentially biological" within the meaning of Article 53(b) EPC.

2. Such a process does not escape the exclusion of Article 53(b) EPC merely because it contains, as a further step or as part of any of the steps of crossing and selection, a step of a technical nature which serves to enable or assist the performance of the steps of sexually crossing the whole genomes of plants or of subsequently selecting plants.

3. If, however, such a process contains within the steps of sexually crossing and selecting an additional step of a technical nature, which step by itself introduces a trait into the genome or modifies a trait in the genome of the plant produced, so that the introduction or modification of that trait is not the result of the mixing of the genes of the plants chosen for sexual crossing, then the process is not excluded from patentability under Article 53(b) EPC.

4. In the context of examining whether such a process is excluded from patentability as being "essentially biological" within the meaning of Article 53(b) EPC, it is not relevant whether a step of a technical nature is a new or known measure, whether it is trivial or a fundamental alteration of a known process, whether it does or could occur in nature or whether the essence of the invention lies in it.

There is, of course, much reasoning behind the answers, some of which has already been analysed by the prolific Oliver G. Randl in some detail here. I am tempted, as many others might be, to make comparisons with case law on the 'non-inventions' of Article 52(2) and (3) EPC, particularly by the liberal use of the meaning-free word 'technical' in these decisions. However, other than an apparent surface similarity, the comparison does not seem to bear close scrutiny and is probably not much help, if not misleading. In answering the questions, the Enlarged Board seem to me to be indicating that they are not establishing the same kind of 'technical effect' reasoning that is now well-established in the case law relating to Article 52(2). Instead, the use of the word technical in this case appears to be more about whether there is enough of a deliberate intervention in the crossing and selection process for there to be a new result. I wonder whether a known type of technical intervention would do just as well as a new one, provided the result of the process was new and inventive.

As for the significance of the decisions otherwise I will refrain from commenting further, mainly because cats don't like vegetables.

More on the decisions from the EPO here.