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The Long Arm of Intellectual Property: Patenting Conventional Plants

Implications for agricultural research and poor smallholder farmers

Wheat varieties in a field trial in Ethiopia (Photo credit: Bioversity International/J.van de Geve)

Four years after its first hearing, the Enlarged Board of Appeals of the European Patent Office (EPO) has now decided (see decision here) that marker-assisted selection is not a biological breeding process but a technical method. This means that plants or seeds obtained through conventional breeding techniques are patentable. This means that to be able to use those seeds the owner of the patent can charge a certain amount and require permission to cross those plants, which is exactly against the very essence of international public goods. 

At the centre of the decision were two patents: Patent EP 1069819 granted by the EPO in 2002 to Plant Bioscience Ltd on a method for selectively increasing the level of a potentially anti-carcinogenic substance in broccoli plants; and Patent EP 1211926 granted to the Israeli Ministry of Agriculture in 2004 on a method for breeding tomatoes with reduced water content. Both patents got challenged respectively by Syngenta Participations AG and Unilever N.V. on grounds of invalidity as they would fall within the exclusion from patentability of Article 53(b) of the European Patent Convention (EPC):

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 shall not apply to microbiological processes or the products thereof.”

Both Syngenta and Unilever referred to the Board the following questions:

  1. Does a non-microbiological process for the production of plants consisting of steps of crossing and selecting plants fall under the exclusion of Article 53(b) EPC only if these steps reflect and correspond to phenomena which could occur in nature without human intervention?
  2. If question 1 is answered in the negative, does a non-microbiological process for the production of plants consisting of steps of crossing and selecting plants escape the exclusion of Article 53(b) EPC merely because it contains, as part of any of the steps of crossing and selection, an additional feature of a technical nature?
  3. If question 2 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 problem started from a tension created between article 53(b) EPC which excludes (or exempts) from patentability plant or animal varieties and essentially biological processes for the production of plants and animals and Directive 98/44 article 3(2) which considers subject of an invention biological materials which are isolated from their natural environment or produced by means of a technical process regardless as to whether it occurred previously in nature.

The decision of the Board certainly poses threats to smallholder farmers not only in developed but also in developing countries. Clearly neither tomatoes nor broccoli are a key crop for the countries where the International Center for Agricultural Research in Dry Areas (ICARDA) and the CGIAR Research Program on Dryland Systems work and therefore one could dismiss the matter. However, the decision can certainly extend to other type of crops like wheat. And that is when we need to start being more concerned and consider strategies to ensure that our mission is fully achieved.
As a matter of fact, the coalition of organizations “No Patents on Seeds” finds that the Board’s decision does nothing but pave the way for companies such as Monsanto, Syngenta and others to take control of resources that belong to all humankind.

They rightly believe that patents on plant and animal breeding will foster further market concentration and erode small breeding companies, making farmers and other stakeholders of the food supply chain even more dependent on just a few big international companies ultimately reducing consumer choice and genetic material.
Given the fact that a patent on plants and seeds restrict not only the sale and reuse in successive seasons of such plants and seeds but it could also exclude them, unless authorized to do so (usually subject to expensive licenses) from further research and breeding, three considerations come to mind in relation to what ICARDA and the Dryland Systems program ought to:

  1. Conduct a thorough analysis of the material used in a project to ensure that it is not patented – this will avoid breach of third parties’ intellectual property rights and in case authorization is needed an appropriate license is negotiated and granted;
  2. Ensure an even more rigorous use of the Standard Material Transfer Agreement (SMTA) which excludes the material received or resulted out of any crosses from patentability should such patentability result in limiting further research and breeding;
  3. Assist developing countries in drafting national legislation that is clear and answers national needs rather than being based on European (or American) law – which is already far too confusing and contradictory.

ICARDA and Dryland Systems can certainly play an important role in ensuring that the target beneficiaries they work for are not damaged by the effect of the broccoli and tomato decision.

About the Author: Francesca Re Manning is the Legal and Intellectual Property Expert at the CGIAR Research Program on Dryland Systems.