2014 CIOPORA Chronicle

such as seeds, flowers, leafs etc., as well
as methods to produce such plants.
Such a method is e.g. patentable when
it comprises a microbiological step, and
fulfills the novelty and inventive step
requirements. For example, a method
to introduce a particular gene into a
plant conferring a new characteristic to
the said plant is patentable.
Is a non-essentially
biological step a must
to qualify for Patent?
Although, as dictated by Art. 53(b)
of the European Patent Convention
and the corresponding national laws,
essentially biological methods are not
patentable, Patents have meanwhile
been granted on plants displaying a
technical effect, that are produced by
conventional breeding techniques.
A European Patent EP1290938 in
the name of Taste of Nature has been
granted for radish plants, obtainable
by screening radish plants for their
ability to produce sprouts having
purple colouring, for selfing and/
or crossing said plants for several
generations and for selecting progeny
with sprouts with purple colouring,
wherein the sprout comprises at least
800 nmol anthocyanins per gram
sprout. This is a plant, obtainable by
conventional breeding techniques. The
invention lies in the fact that it was
observed that purple colour coincided
with a high anthocyanin content, the
anthocyanin having a positive effect
on human health. So the purple colour
was not a mere esthetical aspect (not
patentable as such) but had a technical
effect, namely the provision of a useful
compound or more healthy sprouts.
The sprouts are not regarded as a single
plant variety, as the claimed invention
covers many different offsprings and
progenies thereof, i.e. many different
varieties.
No certainty yet
Nevertheless, last words have not
been yet spoken in this respect. The
European Patent Office has now,
in the latest cases (EP1069819 and
EP1211926) addressed its questions
to the Enlarged Board of Appeal on
whether plants obtained by biological
processes should be excepted from
being patentable, as the method to
obtain such plants is excepted from
Sakura Cress ® (Photo credits: Koppert Cress).
patentability by law. Until a decision
is reached, the European Patent has
now put on hold all Patent prosecution
proceedings, wherein plants produced
by conventional breeding and selection
are claimed. Although these cases
are still pending, the Dutch court in
second instance has recently (May 28,
2013) tried the above radish case and
concluded that a plant, albeit a product
of a biological breeding method that
as such is excluded from patentability,
is not automatically excepted from
patentability. In this case, the radish
plants were held patentable as the
plants were novel and inventive (no
sprouts with purple colour and having
high anthocyanin content were known
or obvious to the skilled person).
Purple anthocyanin containing radish
sprouts would infringe this Patent.
Again: Patents
for breeders?
The Patent system is open for technical
inventions on plants that are not
limited to a single plant variety. If the
plants are produced by a method that
comprises more than just conventional
breeding, the method and the plants
may be patentable. The EPO must
however still decide whether plants
produced by breeding will remain
patentable in the future in Europe.
The tendency seems to be in favour of
patentability. By patenting, breeders
protect their innovative plants from
free use by others for further development
of varieties, conferring improved
protection. |||
About the author
Tom H. Wittop Koning, PhD, is European and Dutch
Patent attorney and partner of the Dutch IP law firm
AOMB, and manages the biotech group from
AOMB’s The Hague office.