T 0049/83 (Propagating material) of 26.7.1983

Summary of Facts and Submissions

1. Patent application No. 79 103 164.4 bearing publication number 0 010 588, which was filed on 27 August 1979, published on 14 May 1980 and for which priority is claimed from a previous application in Switzerland on 28 August 1978, was refused by a decision of the Examining Division of the European Patent Office on 8 October 1982. The decision allowed that the subject-matter of claims 1 to 12 and 15 to 23 was patentable, but claims 13 and 14 were regarded as unpatentable. These claims read as follows: "Claim 13: Propagating material for cultivated plants, treated with an oxime derivative according to formula I in claim 1. Claim 14: Propagating material according to claim 13, characterised in that it consists of seed."

II. The reason given for the refusal was that such subject-matter was debarred by Article 53(b) EPC from patentability and, if this were the case for new varieties, it applied all the more so to the known plant varieties according to claims 13 and 14, even if these had been advantageously treated with oxime derivatives.

III. On 9 December 1982, an appeal was filed against this decision of 8 October 1982 and the appeal fee was paid. The Statement of Grounds was filed on 18 February 1983, and the main points made were as follows: Article 53(b) EPC did not exclude plants from patentability, but merely plant varieties. It could surely be assumed that the legislator had intentionally chosen the two different terms "plant varieties" and "plants" when drawing up Article 53. In effect, excluding plant varieties from patentability meant excluding the products of breeding. The legislator's intention had been, where inventions involving plants and animals were concerned, to distinguish between "essentially biological" and "essentially technical" inventions. The latter group also included the present invention, which concerned an essentially technical process and its direct products. The term "variety", which related to biological breeding, was totally irrelevant in this case; defining a plant variety would necessitate defining a superordinate taxonomic unit such as a genus, species or sub-species. The appellant requested that the decision refusing the application be set aside and that the patent applied for be granted - evidently on the basis of claims 1 to 23 dated 19 August 1982.

Reasons for the Decision

1. The appeal complies with Articles 106 to 108 and Rule 64 EPC and is therefore admissible.

2. No general exclusion of inventions in the sphere of animate nature can be inferred from the European Patent Convention (cf. Article 52(1) in conjunction with Article 53(b) after the semi-colon, and Rules 28 and 28(a) EPC). However, Article 53(b) EPC before the semi-colon prohibits the granting of patents for certain biological inventions. This provision, which needs to be examined more closely in the present case, says that patents shall not be granted in respect of plant varieties or essentially biological processes for the production of plants. The skilled person understands the term "plant varieties" to mean a multiplicity of plants which are largely the same in their characteristics and remain the same within specific tolerances after every propagation or every propagation cycle. This definition is reflected in the International Convention for the Protection of New Varieties of Plants of 2 December 1961, which is intended to give the breeder of a new plant variety a protective right (Article 1(1) extending both to the reproductive or vegetative propagating material and also to the whole plant (Article 5(1)). Plant varieties in this sense are all cultivated varieties, clones, lines, strains and hybrids which can be grown in such a way that they are clearly distinguishable from other varieties, sufficiently homogeneous, and stable in their essential characteristics (Article 2(2) in conjunction with Article 6(1)(a), (c) and (d). The legislator did not wish to afford patent protection under the European Patent Convention to plant varieties of this kind, whether in the form of propagating material or of the plant itself.

3. Claims 13 and 14, whose maintenance resulted in the refusal of the present application, concern propagating material, in particular seeds of cultivated plants, treated with a sulphurous oxime derivative which is characterised in greater detail in claim 1. A definition of cultivated plants in the description (cf. page 9, paragraph 3) shows that this includes all plants which yield substances in any form. Examples of known plants are listed. Propagating material from such cultivated plants comprises all reproductive plant components, including plants and plantlings which have begun to be germinated, but particularly seeds (cf. page 10, paragraph 2, of the description). Even if certain known varieties of wheat, millet and barley are mentioned in the examples in connection with oxime treatment (cf. pages 35 and 36 of the description), the subject-matter of claims 13 and 14 is not an individual variety of plant distinguishable from any other variety, but the claims relate to any cultivated plants in the form of their propagating material which have been chemically treated in a certain way. However, Article 53(b) EPC prohibits only the patenting of plants or their propagating material in the genetically fixed form of the plant variety.

4. The very wording of Article 53(b) EPC before the semi-colon precludes the equation of plants and plant varieties, which would also be at variance with the general sense of the provision. Plant varieties were excluded from European patent protection mainly because several of the signatory States to the European Patent Convention have developed special protection for plant breeding at national and international level (R. Singer, The New European Patent System, Seminar Services International, page 22, paragraph 6). In Article 53(b) EPC before the semi-colon the authors adhered strictly to the wording of Article 2(b) of the Strasbourg Patent Convention of 27 November 1963, in which the Contracting States to that Convention were given the opportunity to exclude plant varieties, amongst other things, from patent protection. Even at that time the majority of the States represented on the Council of Europe were already of the opinion that plant varieties should be protected not by patents but by a special industrial property right (Pfanner, Vereinheitlichung des materiellen Patentrechts im Rahmen des Europarats, GRUR Int. 1962, 545, 547). By contrast, the innovation claimed here does not lie within the sphere of plant breeding, which is concerned with the genetic modification of plants. Rather, it acts on the propagating material by means of chemical agents in order to make it resistant to agricultural chemicals. The new parameter for the propagating material, namely treatment with an oxime derivative, is not a criterion which can be characteristic of a plant variety as far as the protection of varieties is concerned. There is therefore no conflict between the protection of varieties or the patent as different forms of protection for propagating material treated in this way. In fact, patent protection is the only possibility. Technologically, the treatment with an oxime derivative is a plant protection measure which, in contrast to other cases, is carried out on a marketable object, namely the propagating material. It is not necessary for the object of the treatment always to be a plant variety, since the treatment can also be carried out on propagating material which does not meet the essential criteria of homogeneity or stability characteristic of a plant variety. Conversely, it is immaterial to the question of patentability that the propagating material which is treated can also be, or is primarily, a plant variety. If plant varieties have been excluded from patent protection because specifically the achievement involved in breeding a new variety is to have its own form of protection, it is perfectly sufficient for the exclusion to be left restricted, in conformity with its wording, to cases in which plants are characterised precisely by the genetically determined peculiarities of their natural phenotype. In this respect there is no conflict between areas reserved for national protection of varieties and the field of application of the EPC. On the other hand, innovations which cannot be given the protection afforded to varieties are still patentable if the general prerequisites are met.

5. Moreover, the propagating material claimed is not the result of an essentially biological process for the breeding of plants -which would be excluded from patent protection- but the result of treatment with chemical agents (e.g. dressing agents, seed-dressing processes, immersion of the planting in an oxime solution, cf. page 6, line 23, page 9, line 8 and page 10, lines 17-20). To summarise, therefore, Article 53(b) EPC is not an obstacle to the patenting of the propagating material claimed in the present case.

6. In order to be patentable, the subject-matter of the independent claims 13 and 14 must itself be new and inventive. A passage in the decision being contested could be understood to mean that the Examining Division considered the propagating material, as claimed, to be a "known plant variety". Apart from the fact that, as already stated under 3., no individual plant varieties are claimed in the application, a propagating material cannot be said to be known merely because it only has the ability to produce a plant which is already known. What is more, a product is to be considered new if it is distinguishable from known products by reference to reliably ascertainable parameters. In the present case, the protective effect of the oximes on the propagating material vis-à-vis the harmful effect of aggressive agricultural chemicals, particularly herbicides (cf. page 1, paragraph 1 in conjunction with page 6, paragraph 2 to page 7, paragraph 1 and page 33), together with customary chemico-analytical methods of identifying the oxime (cf. for instance, example 7) should normally be taken into consideration for novelty testing purposes. The products according to claims 13 and 14 in the application are new products. The characterising feature which distinguishes them from the propagating material, which is known as such, consists in the fact that they are treated by the process according to claim 1, which is judged to be new by the department of first instance.

ORDER

For these reasons, it is decided that:

1. The decision of the Examining Division of the European Patent Office dated 8 October 1982 is set aside.

2. The case is remitted to the first instance for further prosecution.