New EPO enlarged board referral

The IPKat thanks Jim Boff of patent attorneys Phillips & Leigh for pointing out a recently issued interlocutory EPO technical board decision (T 83/05), in which the board has referred questions to the enlarged board of appeal regarding exclusions under Article 53(b) of the European Patent Convention. Article 53(b) says:

European patents shall not be granted in respect of:
[...]
(b) plant or animal varieties or essentially biological processes for the production of plants or animals; this provision does not apply to microbiological processes or the products thereof.

The decision related to a patent (EP1069819) for a method of producing broccoli having elevated levels of glucosinolates, a class of compounds with anti-cancer potential. One of the questions the board needed to answer was whether the claimed method was excluded under Article 53(b) for being an essentially biological process for producing plants. The answer depended on an interpretation of this exclusion that the Board felt unable to arrive at, after a thorough review and discussion of the legislative history and case law surrounding the exclusion. The board found that the correct interpretation of Article 53(b) had yet to be determined, since the boards of appeal had not yet decided a case whose outcome hinged on the question as to which of two possible approaches prevailed. The following two questions were proposed for the enlarged board to consider:

1. Does a non-microbiological process for the production of plants which contains the steps of crossing and selecting plants 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, an additional feature of a technical nature?

2. If question 1 is answered in the negative, what are the relevant criteria for distinguishing non-microbiological plant production processes excluded from patent protection under Article 53(b) EPC from non-excluded ones? In particular, is it relevant where the essence of the claimed invention lies and/or whether the additional feature of a technical nature contributes something to the claimed invention beyond a trivial level?

The IPKat thinks that this referral is both good and bad news for patent applicants. On the positive side, applicants will be able to get a more definitive answer on whether applications relating to crossing and selecting of plants are likely to be allowable. On the negative side, those applications currently pending in this area, whose allowance will depend on answering the questions, are likely to be held up until the enlarged board announce their decision. Past experience shows that the wait may be considerable. In the meantime, the IPKat recommends that all applicants stay healthy by carrying on eating their greens.