Patents embracing plant varieties valid in Europe

DECISION OF THE ENLARGED BOARD OF APPEAL OF THE EUROPEAN PATENT OFFICE IN RE NOVARTIS

Munich, 20 December 1999 .-- The Enlarged Board of Appeal of the European Patent Office has decided that a claim wherein specific plant varieties are not identified is not excluded from patentability under Article 53(b) of the European Patent Convention (EPC), even though it may embrace plant varieties (Headnote I of decision G 01/98 issued in response to the referral of points of law by Technical Board of Appeal 3.3.4 in case T 1054/96).

The Enlarged Board of Appeal took the view that Article 53(b) EPC defined the borderline between patent protection and plant variety protection. The extent of the exclusion for patents was the obverse of the availability of plant variety rights. Since plant variety rights were only granted for specific plant varieties and not for technical teachings which could be implemented in an indefinite number of plant varieties, it was not sufficient for the exclusion from patent protection in Article 53(b) EPC to apply that one or more plant varieties were embraced or might be embraced by the claims of the patent application.

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Decision G 01/98, dated 20 december 1999, is available on the Internet as a 41-page PDF file at:

http://www.european-patent-office.org/dg3/biblio/g980001ex1 .htm

The Headnote of the decision reads:

I. A claim wherein specific plant varieties are not individually claimed is not excluded from patentability under Article 53(b), EPC even though it may embrace plant varieties.

II. When a claim to a process for the production of a plant variety is examined, Article 64(2) EPC is not to be taken into consideration.

III. The exception to patentability in Article 53(b), 1st half-sentence, EPC applies to plant varieties irrespective of the way in which they were produced. Therefore, plant varieties containing genes introduced into an ancestral plant by recombinant gene technology are excluded from patentability.