In decisions G 2/07 and G 1/08, the so called “Broccoli” and “Tomatoes” decisions from the Enlarged Board of Appeal of the European Patent Office, biological inventions under the EPC were analyzed in detail. It was held that 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 (headnote 1).
The additional presence of “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” is not enough to escape the exclusion (headnote 2). However, a “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” is enough to escape the exclusion (headnote 3). For the examination whether such a process is excluded from patentability as being essentially biological, “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” (headnote 4).
The guidelines provided in the mentioned decisions regarding patentable biological inventions under the EPC are however not concluding. Currently, two further referrals to the Enlarged Board of Appeal concerning biological inventions are pending (G 2/12, “Tomatoes II”; and G 2/13, “Broccoli II”).
Moreover, in decision T 1729/06 from 17 September 2014, the ruling Board of Appeal explicitly states that decisions G 2/07 and G 1 /08 provide neither comprehensive nor exhaustive definitions of subject matters that would be excluded from patentability under Article 53(b) EPC (see T 1729/06, “Seedless watermelon”, at no. 20 of the Reasons). This decision relies on the Implementing Regulations of the EPC, in particular Rules 26(2) and 27 EPC, to emphasize that biotechnological inventions are in principle patentable under the EPC. The Board itself puts it this way:
“Rule 26(2) EPC states that "biotechnological inventions are inventions which concern a product consisting of or containing biological material or a process by means of which biological material is produced, processed or used", whereby "biological material" is defined in Rule 26(3) EPC as any material containing genetic information and capable of reproducing itself or being reproduced in a biological system. Undoubtedly the presently claimed use and methods therefore concern "biotechnological inventions" and are therefore, in principle, patentable (Article 52(1) and Rule 27 EPC).”
In the end, the Board in T 1729/06 comes to the conclusion that the legislator drafting Article 53(b) EPC did not have the intention to exclude from patentability a whole class of inventions, i.e. horticultural or agricultural processes. The Board further concludes that the EPC legislator only wished to exclude from patentability, in the context of the process aspect of the exclusion in relation to plant inventions, the - then conventional - processes applied by plant breeders in connection with new plant varieties for which a special property right was available under the International Convention for the Protection of New Varieties of Plants and processes which were fundamentally of this type.
The case underlying T 1729/06 was an appeal against a refusing decision from an Examining Division of the European Patent Office. The appeal was allowed and the case was remitted to the first instance for further prosecution. The “Seedless watermelon” is therefore not yet as famous as the “Tomatoes” and the “Broccoli”, but it is quite remarkable in the context of biological inventions under the EPC.