Patentability of Plants: At the Crossroads between Monopolizing Nature and Protecting Technological Innovation?

• Date: 01 July 2013
• Published date: 01 July 2013
• DOI: http://doi.org/10.1002/jwip.12012

Patentability of Plants: At the Crossroads between

Monopolizing Nature and Protecting Technological

Innovation?

Sven J. R. Bostyn

University of Liverpool

This article provides an in-depth critical analysis of pressing issues regarding the patentability of plants. There is no

public interest overarching principle present in the European Patent Convention or any other convention for that

matter which would exclude patent protection for plants. The expansionist behavior of some users of the patent system

seeking to obtain patent protection for methods and products which are very akin to traditional breeding methods

needs to be halted and patent applications in that context deserve very close scrutiny so as to avoid that the border is

crossed. Patents for hybrid seeds ought not to be protected by patents, as they in effect protect plant varieties as such. If

the patent system is not capable of keeping such innovations outside of the patent territory, the call for excluding all

plant-related innovations from patentability will become more inf‌luential. Products produced by essentially biological

processes should not be patentable. However, in the absence of a statutory basis, the current legal framework does not

allow the judiciary to come to such conclusion. The EPC needs to be amended in this respect. Finally, introducing a

breeders’ exemption in the patent system could jeopardize the internal and external architecture of the patent system

and one should be wary of introducing it.

Keywords patents; plants; breeding methods; breeders’ exemption

Intellectual property rights for plant material are for many reasons controversial, not least because they

relate to subject matter which is capable of affecting us all in our basic needs for food and our agricultural

and biodiversity system. Despite those controversies and the apparent importance of the subject, it has

remained for many years and to some extent still today, the realm of a limited number of scholars and

predominantly practitioners, both in private practice and unsurprisingly from the plant and seed industry.

For many years, it was a subject that did not appeal to most, witness whereof the relatively limited interest

in the subject prior to the turn of the century.

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This all has dramatically changed the last decade. An ever expanding intellectual property system, the

practices of a number of right holders and a growing awareness of public interest issues surrounding plant

materials have made this subject a focal point of attention. That the f‌ield has seen a number of high prof‌ile

cases, a number of which will be discussed in this article, has helped in maintaining attention on the

subject.

What are now the most controversial issues in this area of plant material and intellectual property

protection? First and foremost, one discussion centers around the question as to whether plants are

patentable subject matter in the f‌irst place. That question is different from the one as to whether plants

should be protectable by patents. The latter is a pure policy question, and it has been decided not to deal

with it in this article, not because it is not a relevant question, but because it is a discussion which at the end

of the day can have no winners or losers, as it is a question which boils down to more general issue of the

desirability of having patent protection for biological material. Over the years, the discussion about the

patentability of biological material has not effectively evolved considerably, everyone more or less

circling around the nest of one’s own arguments (biological material is not patentable because it is already

in nature versus the point that biological material is patentable as it in most cases not identical to what is in

©2013 John Wiley & Sons Ltd 105

The Journal of World Intellectual Property (2013) Vol. 16, no. 3–4, pp. 105–149

doi: 10.1002/jwip.12012

nature). Those who would like to argue that issues about intellectual property protection for plant material

are of an entirely different quality than those about biological material in general are in the view of the

author misled by their own argumentative adrenaline. There is no major difference, as intellectual

property protection for material stemming from nature will in any event have an important inf‌luence on

society. The only issue and maybe more immediate difference is that of biological diversity. The present

author is not convinced, however, that the availability of patent protection for plant material is necessarily

the cause for any loss of biodiversity. This loss is most probably due to a multitude of factors, of which

patent protection may be one, if at all. There are many other reasons why a certain crop would be preferred

at the expense of other crops and hence of a sustained biodiversity, and those reasons can be entirely

disconnected from patent protection, even though not disconnected from f‌inancial benef‌its. Technological

development, even in the absence of patent protection, has probably the most important effect. Certain

technologies, which do not necessarily need to be patent protected but some of which have been patented,

lead on the one hand to a situation of more dependence of farmers on suppliers of seeds (e.g., terminator

technology, growing of hybrids which do not breed through to unlimited future generations, obligating

farmers to buy new seeds every year), and on the other hand to the choice by farmers of certain seeds above

others (e.g., a certain plant variety may be preferred because of its better resistance to disease, and such

plant variety may have been bred without patent protection).

However interesting the above discussion may be, it will be left aside in this article, and our attention

will be focused on trying to establish the parameters of patent protection for plant material and discussing

some recent developments.

This article provides an in-depth critical analysis of pressing issues regarding the patentability of

plants. The approach chosen is inspired by the lack of recent literature trying to critically analyze those

issues from a semi-doctrinal approach. Most of the recent literature is very much policy based, ignoring

the statutory and judicial framework in place in this area. This article uses a semi-doctrinal approach with a

view to f‌ind solid and realistic solutions and suggestions while maintaining the foundational structure of

the patent system without compromising amendments, which the patent system requires in this area. It

seeks to provide a useful but critical appraisal of the patentability of plants, scrutinizing the most recent

technological and legislative developments and provides suggestions for future legislative and judicial

work in this f‌ield of the law.

It will be argued in this article that there is no public interest overarching principle present in the

European Patent Convention or any other convention for that matter which would exclude patent

protection for plants.

It will further be argued in this article that the expansionist behavior of some users of the patent

system seeking to obtain patent protection for methods and products which are very akin to traditional

breeding methods needs to be halted and patent applications in that context deserve very close scrutiny so

as to avoid that the border is crossed. It is submitted that the patent system is there to protect technical

innovation, and not to protect breeding methods. Certain technological innovations in plants merit patent

protection, but the mere fact that it is possible to obtain patent protection for plant innovations should not

be seen as a stimulus to patent traditional breeding methods by incorporating technical features in such

methods which have no essential technical function or effect in the method claimed. It is crucial that those

who administer and apply the patent rules maintain a critical view so as to avoid that patents are granted for

innovations which were not meant to be protected by the framers of the patent system. It is argued in this

context that if the patent system is not capable of keeping such innovations outside of the patent territory,

the call for excluding all plant-related innovations from patentability will become more inf‌luential, and in

case of such evolution probably also justif‌ied. Users of the patent system trying to expand patent protection

to such innovations should also be warned that such practices are counterproductive in the long run and

may lead to paradigm shifts.

Sven J. R. Bostyn Patentability of Plants

©2013 John Wiley & Sons Ltd

106 The Journal of World Intellectual Property (2013) Vol. 16, no. 3–4

It is further argued that products produced by essentially biological processes should not be

patentable. However, in the absence of a statutory basis, the current legal framework does not allow the

judiciary to come to such conclusion. It is submitted that the EPC needs to be amended in this respect.

This could be done by changing the Implementing Regulations, as there is precedent in the statute and the

history of the EPC that amendments introducing further exceptions based on a lacuna in the statute can

be introduced in the Implementing Regulations.

It is f‌inally argued in this article that, despite the fact that introducing a breeders’ exemption in the

patent system, allowing breeders to use patented material to develop new varieties and eventually

commercialize such new varieties, might be a concept which has some appeal, it could jeopardize the

internal and external architecture of the patent system and one should be wary of introducing it. Any

exception created needs to be in proportion to the goals to be achieved, and one should ask whether

interfering with the foundational structure of a system justif‌ies those goals.

Plants versus Plant Varieties

The European Patent system has chosen the route of allowing patents for plants, but excluding patent

protection for plant varieties. Article 53(b) EPC200 says in this context:

[Patents shall not be granted in respect of:] plants 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.

This provision is unfortunately an example of unclear drafting, and it is not surprising to see that

almost all concepts therein have been the subject of considerable discussion. Various issues have arisen

about this provision, the most important of which are:

1. What is the difference between a plant and a plant variety and when is plant variety excluded from

patentability?

2. Are only plant varieties excluded from patentability, or plants in general?

3. What are essentially biological processes for the production of plants?

4. Are the products obtained by essentially biological processes patentable or not?

Not surprisingly, most of the above-mentioned issues have given rise to case law at the highest level

of the EPO, the Enlarged Board of Appeal (EBA).

What is the Difference Between a Plant and a Plant Variety and When is Plant Variety Excluded

from Patentability?

Despite the fact that asking what the difference is between a plant and a plant variety seems a somewhat

straightforward question, as we have def‌initions of what constitutes a plant variety,

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it has nevertheless

proven somewhat more complicated in real life, as patent applicants have claimed inventions for plants in

general, which inventions may in practice be carried out on plant varieties. This has given rise to the

question as to what is exactly a plant variety, and whether the exclusion would in fact still apply if the

invention did not claim a plant variety as such, but if the invention in the real world would be applied to

plant varieties.

First of all, let us start with the easy part of the question. What is a plant variety? As said, we have a

def‌inition of what is a plant variety. Interestingly enough, the EPC did not have a def‌inition of the term

plant variety,

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which has been the cause of a number of complications we know today (and also partly of

Patentability of Plants Sven J. R. Bostyn

©2013 John Wiley & Sons Ltd

The Journal of World Intellectual Property (2013) Vol. 16, no. 3–4 107