EPLAW PATENT BLOG

EPO – Convention on Biological Diversity and the exception to patentability for inventions which are contrary to “ordre public” or morality

Posted: April 22nd, 2010

EPO EPO, Opposition Division, decision dated 20 April 2010, revoking European patent 1 429 795 (open to appeal)

European patent 1 429 795 is directed to a method for producing an extract from Pelargonium sidoides and/or Pelargonium reniforme, characterized by  subjecting the roots of the plants to certain steps in order to obtain the extract. The description mentions that Pelargonium sidoides has been traditionally used in Southern Africa as a medicament for a long time. 

The patent was opposed by several opponents on the grounds of lack of novelty, lack of inventive step and lack of sufficiency of disclosure. In addition, opponents African Centre for Biosafety and Erklärung von Bern relied on the grounds that the invention was contrary to “ordre public” and morality within the meaning of Art. 53 (a) EPC. They submitted that pelargonium roots in sufficient quantities as well as the traditional knowledge of indigenous communities had been available in South Africa and that the invention was based in essence on this fortunate circumstance. Under the Convention on Biological Diversity (CBD), the proprietor was obliged to respect, when making and when exploiting the invention, to comply with the criteria of “previous informed consent” and “benefit sharing” as stipulated in Art. 8(j), 15 and 16 CBD. The proprietor had not shown that he had acted in conformity with these requirements.


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The Opposition Division, referring to Art. 53 (a) EPC, notes that the relevant question is whether the exploitation of the invention is contrary to “ordre public” or morality. In this respect, according to the Opposition Division, “ordre public” includes the protection of the environment. However, the mere assumption that an excessive gathering of  P. sidoides and P. reniforme could endanger the environment did not justify revoking the patent, in particular, since the invention could be exploited by using plants obtained by controlled farming.

As to the opponents’ submission that the proprietor was obliged to prove in grant proceedings that he had complied with the requirements of previous informed consent and benefit sharing under the CBD, the Opposition Division held that not fulfilling such disclosure requirements as contained e.g. in § 34a of the German Patent Act was not sufficient to apply the exclusion from patentability according to Art. 53 (a) EPC.

Eventually the patent was revoked on the grounds of lack of inventive step. The extract as such was known and the modification of known manufacturing processes as claimed was held to be obvious.

Read the decision (in German) here.

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