Posted: January 31st, 2019
EPO, Technical Board of Appeal 3.3.04, decision of July 5, 2018 in case T 2435/13 – Clubroot resistant plants/SYNGENTA, by Dr. Rudolf Teschemacher, Bardehle Pagenberg
After decision T 1063/18 of December 5, 2018, stating that Rule 28 (2) EPC as introduced in 2017 is in conflict with Article 53(b) EPC, (see post dated December 11, 2018, reasoned decision not yet available), another decision of Technical Board of Appeal 3.3.04 on the exclusion from patentability of essentially biological processes for the production of plants has become known from the EPO’s database, although issued already half a year earlier.
Decision T 2435/13 deals with the interpretation of the term “essentially biological process for the production of plants”. Somewhat simplified, the claimed subject-matter was directed to obtaining a Brassica oleracea plant resistant to clubroot by crossing a Brassica rapa plant resistant to clubroot with a B. oleracea plant, rescuing embryos resulting from the cross and regenerating plants from them, selecting plants that are resistant to clubroot, back-crossing such plants with a B. oleracea plant, rescuing embryos resulting from the back-cross, and again selecting a plant that is resistant to clubroot.
The applicant argued that the claimed subject matter was not excluded from patentability under Article 53(b) EPC as an essentially biological process for the production of plants. The Enlarged Board of Appeal (EBA) had held in G 2/07 and G 1/08 that “sexually crossing the whole genomes of plants” was the key criterion for determining whether a process for the production of plants was “essentially biological”. The EBA had construed this criterion as involving meiotic recombination events throughout the whole genome during the pairing of homologous chromosomes. By contrast, the F1 embryo obtained by the first crossing step of the claimed method comprised a juxtaposition of the ten A-chromosomes of B. rapa and the nine C-chromosomes of B. oleracea, which were not homologous to each other. The resulting embryo was not viable and required embryo rescue and regeneration. Since only partial homologous recombination on limited portions of the respective genomes took place, the claimed method was not directed to a process involving sexually crossing the whole genomes. Thus, answer 1 of decisions G 2/07 and G 1/08 did not apply.
Furthermore, the claimed method constituted a process as defined in answer 3 of decisions G 2/07 and G 1/08 since the rescue steps between the steps of sexually crossing and selecting were additional steps of a technical nature, which by themselves introduced a trait into the genome or modified a trait in the genome of the plant produced, so that the introduction or modification of that trait was not the result of the mixing of the genes of the plants chosen for sexual crossing.
The Board disagrees with both lines of arguments.
First, the Board infers from G 2/07 and G 1/08 that the EBA considered all methods containing or consisting of steps of sexually crossing the whole genome of plants and the subsequent selection of plants, regardless of those plants being sexually incompatible or not, to be excluded from patentability. Hence, the claimed process is “essentially biological” within the meaning of Article 53(b) EPC, as formulated in answer 1 of decisions G 2/07 and G 1/08.
Second, the Board, while conceding that the rescue steps are of a technical nature, observes that these steps by themselves do not introduce the clubroot resistance trait into the genome of the plants. Rather, the introduction of this trait into the genome of the plants produced is the result of the mixing of the genomes of the plants chosen for the sexual crossing. Hence, the claimed method is not a process as referred to in answer 3 of decisions G 2/07 and G 1/08.
As to the last auxiliary request, the Board held that a method for identifying progeny plants obtained by a cross of parent plants of which one comprises a resistance to clubroot by testing the progeny plants for the clubroot resistance does not read on a process for the production of plants, let alone on such a process which is essentially biological within the meaning of Article 53(b) EPC. Hence, this request was not excluded from patentability and remitted to the first instance for further prosecution.
A copy of the decision can be read here.