Metzger, Axel --- "Patents on native traits: what scope of protection?" [2017] ELECD 813; in Matthews, Duncan; Zech, Herbert (eds), "Research Handbook on Intellectual Property and the Life Sciences" (Edward Elgar Publishing, 2017) 214

Book Title: Research Handbook on Intellectual Property and the Life Sciences

Editor(s): Matthews, Duncan; Zech, Herbert

Publisher: Edward Elgar Publishing

ISBN (hard cover): 9781783479443

Section: Chapter 12

Section Title: Patents on native traits: what scope of protection?

Author(s): Metzger, Axel

Number of pages: 13

Abstract/Description:

The recent practice of the European Patent Office (EPO) to grant patents on plants with ‘native traits’ is highly controversial in Europe. While biotechnology and seed companies seek for protection of their investments that goes beyond the traditional protection scheme of plant variety rights, NGOs and SMEs fear that this new generation of plant patents may favour large international seed companies and endanger biodiversity.In the last years, this controversial debate has mainly focused on the question of which materials from innovative plant breeding should be eligible for patent protection. Should patent protection be restricted to transgenic plants or genetic materials produced by technical means or isolated from its natural environment and to technical processes relating to plant breeding, or should the patent system also encompass plants with new properties resulting from the classical breeding methods of crossing and selecting? The EPO Enlarged Board of Appeal denied in its landmark decision Broccoli I (2010) the patentability of classical breeding methods based on crossing and selecting as process claims even if the selection is based on the screening of specific genetic combinations.Yet in Tomatoes II (2015) the same Enlarged Board decided to open the door for patent claims on plants as products, irrespective of whether the plants result from classical breeding efforts or from technical processes.Whether the EPO will continue this practice of granting broad claims on native traits is currently uncertain. The European Commission published in November 2016 a notice on the interpretation of certain articles of the Biotechnology Directive 98/44/EC comprising a clear statement that the exclusion of plant varieties and essentially biological for the production of plants should also cover plants that are obtained by means of essentially biological processes.As a reaction, EPO published a press release declaring that EPO will stay its proceedings until member states have decided whether EPO should follow the Commission.But not only the fundamental questions on the interpretation of Article 53 lit. b) EPC remain controversial, also the exact patentability requirements for native traits and the effect of such patents are still under discussion. Therefore, from a long-term perspective, Tomatoes II may turn out be nothing but an intermediate step in the development. However, for the time being, breeders and biotechnology companies must live with the patents granted by the EPO so far. It is therefore indispensable to understand the effects of this new type of European plant patents for legal practice, especially to understand the scope of protection. This chapter will give an overview of recently granted patent claims on native traits (section 2), discuss the scope of protection with some details (section 3) and shed a light on the limitations (section 4). Special emphasis will be given to the comparison with the scope of protection of plant variety rights under the Regulation 2100/94. The effect of a patent on legal practice and for the market depends on the drafting of the patent claims. According to Article 69 EPC, the extent of the protection conferred by a European patent shall be determined by the claims. However, the exact scope of the exclusive right has to be determined in accordance with the rights that would be conferred by a national patent granted in the state for which the patent has been granted. National patent legislation in Europe provides a different scope of protection for products, processes, products obtained directly by a protected process, patents on the use of a substance, and – not explicitly regulated in the European patent acts – product-by-process claims, see for example: section 9 German Patent Act; Article L 613-3 French Intellectual Property Code; and section 60 UK Patents Act. Article 25 UPC Agreement follows the same pattern. On the EU level, the scope of protection is harmonized for biotechnological inventions by Article 8 of the Directive 98/44 that also provides for a differentiated exclusive right for materials and processes. It is therefore necessary to have a closer look at the exact wording of the patent claims granted for native traits.