G 0001/08 (Tomatoes/STATE OF ISRAEL) of 9.12.2010

European Case Law Identifier: ECLI:EP:BA:2010:G000108.20101209
Date of decision: 09 December 2010
Case number: G 0001/08
Application number: 00940724.8
IPC class: A01H 5/10
Language of proceedings: EN
Distribution: A
Download and more information:
Decision text in EN (PDF, 358.834K)
Documentation of the appeal procedure can be found in the Register
Bibliographic information is available in: EN
Versions: Published
Title of application: Method for breeding tomatoes having reduced water content and product of the method
Applicant name: State of Israel - Ministry of Agriculture
Opponent name: Unilever N.V.
Board: EBA
Headnote: The questions of law referred to the Enlarged Board of Appeal are answered 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.
Relevant legal provisions:
European Patent Convention Art 52
European Patent Convention Art 52(1)
European Patent Convention Art 52(2)
European Patent Convention Art 52(3)
European Patent Convention Art 53
European Patent Convention Art 53(b)
European Patent Convention Art 83
European Patent Convention Art 164(2)
European Patent Convention R 26(1)
European Patent Convention R 26(2)
European Patent Convention R 26(3)
European Patent Convention R 26(5)
European Patent Convention R 27(c)
European Patent Convention 1973 Art 33(1)(b)
European Patent Convention 1973 Art 52
European Patent Convention 1973 Art 52(4)
European Patent Convention 1973 Art 53(b)
European Patent Convention 1973 Art 76
European Patent Convention 1973 Art 83
European Patent Convention 1973 Art 164(2)
European Patent Convention 1973 R 23c(c)
European Patent Convention 1973 R 23b(1)
European Patent Convention 1973 R 23b(5)
European Patent Convention 1973 R 25(1)
European Patent Convention 1973 R 28
Transitional Provisions: Decision AC of 28 June 2001 on the transitional provisions under Art 7of the Act revising the EPC Art 001(1)
Transitional Provisions: Decision AC of 7 December 2006 amending the Implementing Regulations to the European Patent Convention 2000 Art 002
Transitional Provisions: Notice dated 1 July 1999 concerning the amendment of the Implementing Regulations to the European Patent Convention, Point 19, explanatory notes to R 23b(5)
Vienna Convention on the Law of Treaties (1969) Art 31(1)
Vienna Convention on the Law of Treaties (1969) Art 32
Paris Convention for the Protection of Industrial Property Art 4g
Convention on the Unification of Certain Points of Substantive Law on Patents for Invention (Strasbourg Patent Convention) Art 2b
International Convention for the Protection of New Varieties of Plants (UPOV Convention)
European Union - Directive 98/44/EC of the European Parliament and the Council of 6 July 1998 on the legal protection of biotechnological inventions Art 002(2), 7, Recitals 17, 33
German Federal Court of Justice ("Bundesgerichtshof"), BGH 27.3.1969, X ZB 15/67 "Rote Taube" ("Red Dove")
Tribunal of Commerce of the Canton of Bern, ("Handelsgericht des Kantons Bern"), 16.12.1993, "Tetraploide Kamille
Keywords: Admissibility of referrals - yes - Applicable law
Article 33(1)(b) EPC and substantive patent law - Protection of "legitimate" expectations
Rule 26(5) EPC and Article 2(2) Biotech Directive as exhaustive definitions - yes - Crossing and "selection" natural phenomena by way of a legal fiction - no
Legislative history of Article 2(2) Biotech Directive - Contradictory meaning of the provision - No guidance on the interpretation of the term "essentially biological process for the production of plants in Article 53(b) EPC"
Meaning of that exclusion: production of plants vs. plant varieties - production vs. "Züchtung" and "obtention" (not decided)"
Interpretation of 'essentially biological':
The Article 52(4) EPC 1973 analogy (no) - the computer-related inventions approach(no) - the T 320/87 approach - criteria linked to the state of the art (no)
The systematic context of Article 53(b) EPC - the legislative history of the SPC and the EPC 1973
Conclusions from legislative history:
Exclusion of processes based on sexual crossing of whole genomes and on subsequent selection of plants (yes)
Addition of technical step serving the performance of the process steps - not sufficient to escape exclusion
Inclusion within that process of a step by itself modifying the genome of the plant produced - process not excluded from patentability
Catchwords:

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Cited decisions:
G 0002/93
G 0001/98
G 0002/06
G 0003/08
J 0011/91
J 0016/91
T 0320/87
T 0039/93
T 0356/93
T 1054/96
T 1173/97
T 0258/03
T 0083/05
T 1242/06
Citing decisions:
G 0001/11
T 0083/05
T 1242/06
T 1729/06
T 1784/06
T 1199/08
T 0015/10
T 0915/10
T 2323/11

38 references found.

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EPC Articles

EPC Implementing Rules

EPO Guidelines - G Patentability

Offical Journal of the EPO

Case Law Book: I Patentability

Case Law Book: III Amendments

Case Law of the Enlarged Board

General Case Law