EPO Enlarged Board Rules on Patent-Eligibility of Plants in Tomatoes II and Broccoli II Cases

On 25 March the EPO's Enlarged Board of Appeal issued its decision in the so-called "Tomatoes II" and "Broccoli II" cases (G2/12 and G2/13), which relate to the patent-eligibility of plants under Article 53(b) EPC.

For policy reasons, Article 53(b) EPC prohibits the patenting of plant and animal varieties and essentially biological processes for the production of plants and animals. In December 2010, the EPO's Enlarged Board of Appeal issued its original "Broccoli" and "Tomatoes" decisions (G2/07 and G1/08), which took a strict view on the exclusion of essentially biological processes. These decisions did not however address explicitly whether or not it is legitimate to claim the products of such processes, e.g. novel and inventive plants obtained by "classical" breeding, even though processes for their production are patent-ineligible.

The EPO's Enlarged Board of Appeal has now confirmed that the "essentially biological process" limb of Article 53(b) does not apply to product claims. This means that claims directed to novel and inventive plants obtained by methods which include breeding steps should in principle be allowable going forward, whether claimed in product per se or product-by-process format. Previous practice on this was not settled but this confirms the approach taken by Applicants since the original "Broccoli" and "Tomatoes" decisions were handed down. In practice these cases often involve other patentability challenges, for example in terms of novelty, sufficiency of disclosure and clarity so relatively few such patents have actually been granted to date but even so this will be welcome news for patentees in the agricultural sector. It will however likely be controversial as many lobby groups and breeders' organisations have long argued in favour of a more restrictive position.

The full text of the decisions can be found here.