From peppers to watermelons: Navigating the "dynamic interpretation" of plant and animal patentability (T 2049/23)

25 views

Skip to first unread message

Rose Hughes

unread,

Oct 29, 2025, 7:11:45 AMOct 29

to ipkat_...@googlegroups.com

From peppers to watermelons: Navigating the "dynamic interpretation" of plant and animal patentability (T 2049/23)

Dr Rose Hughes Monday, October 27, 2025 - epo, essentially biological processes, G3/19, patents, PatKat, plants, Rose Hughes

The Enlarged Board of Appeal (EBA) decision in G 3/19 (Pepper) infamously performed a "dynamic interpretation" to exclude plants obtained by essentially biological processes. This dynamic interpretation amounted to a reversal of the EBA's previous affirmative answer in G 2/12 (Broccoli/Tomato II) to the exact same question in response to political pressure (see IPKat: Lessons in legal fudge from the EBA in Pepper (G3/19)). The "dynamic" nature of the interpretation meant that the EBA ordered a cut-off date from when G3/19 should be deemed to apply. Under G3/19, before 1 July 2017 (and the introduction of Rule 28(2)) plants or animals produced by essentially biological processes were not excluded from patentability, whilst any patent application filed after this date would fall under the exclusion introduced by G3/19. The political controversy over this issue and the lack of retroactive effect of G3/19 means that for some, the debate isn't yet over (T 2049/23 (Watermelon)).

Legal background: G3/19 (Pepper) and "dynamic interpretation"

Article 53(b) EPC states that "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...". The interpretation of Article 53(b) has involved years of debate, particularly as to whether Article 53(b) applies to just the processes for producing plants or animals, or also excluded the plants or animals produced by these processes.

Watermelon!

The EBA first tried to clarify things in G2/12 (Broccoli/Tomato II), finding that whilst essentially biological processes were excluded from patentability, the products of those processes (i.e., the plants themselves) were patentable. However, this was not a politically popular decision. In the outcry following G 2/12, the Administrative Council (AC) of the EPO responded with the introduction of new Rule 28(2) EPC, which explicitly states that products from essentially biological processes are not patentable. This led to the stand-off in T 1063/18 (Pepper), and the subsequent referral that became G 3/19. In G 3/19 the EBA infamously performed a "dynamic interpretation" of the EPC in light of new Rule 28(2) EPC, finding that plants obtained by essentially biological processes were now no longer patentable. The EBA concluded:

"although neither the Contracting States, in accordance with Article 172 EPC, nor the Administrative Council, in accordance with Article 33(1)(b) EPC, has formally amended Article 53(b) EPC to extend the scope of the process exclusion to animals, plants and plant material obtained by essentially biological processes, when now interpreting Article 53(b) EPC, the Enlarged Board cannot ignore the Administrative Council's decision to introduce a new paragraph 2 in Rule 28 EPC

[...]

the introduction of Rule 28(2) EPC, the legal and factual situation underlying decision G 2/12 (supra) has substantially changed. This amendment constitutes a new aspect or consideration which has arisen since the EPC was signed which may give reason to believe that a grammatical, and restrictive, interpretation of the wording of Article 53(b) EPC conflicts with the legislator's aims [...]

The Enlarged Board accordingly abandons the interpretation of Article 53(b) EPC"

Importantly, however, because of the "dynamic" nature of this interpretation, the EBA ruling in G3/19 was stated as only applying to applications filed on or after 1 July 2017.

Continued controversy

Since it was decided, the reception to G3/19 has been profoundly polarized. The agri-tech and biotechnology industries have largely condemned the decision as a significant blow to innovation, arguing that it disincentivises the substantial research and development investment required for modern, technology-assisted breeding. Conversely, traditional plant breeders, farmers' associations, and anti-patent advocacy groups have celebrated the outcome as a crucial victory. For these stakeholders, the decision safeguarded the fundamental principle of open access to genetic resources. However, even these groups were not completely happy, given the lack of a retroactive effect on patents filed before the 2017 cut-off date.

Reopening the debate: Challenging patentability via Rule 27 and G 2/07

The patent application in T 2049/23 was filed in 2013, placing it in the old regime governed by G2/12 before the dynamic interpretation by the EBA in G3/19. The patent, EP 2814316 from Nunhems B.V., related to triploid and tetraploid watermelon plants with a "bush growth habit". This trait, derived from a recessive allele, allows the plants to be grown at a higher density, which the patent states leads to a higher fruit yield per hectare. The Opponents, including "No patents on seeds!", argued on appeal that the claims were excluded under Article 53(b) EPC.

The Opponents' arguments on appeal were essentially an attempt to sidestep the G 3/19 transitional provisions by reopening the debate on the patentability of products produced by essentially biological processes. The Opponents first argued that the invention was not a "biotechnological invention" under Rule 27 EPC. In their view, Rule 27 EPC provides a closed list of patentable biotechnological inventions.

In contrast to Article 53 and Rule 28, Rule 27 EPC defines biotechnological inventions that are patentable. According to Rule 27, biotechnological inventions shall be patentable if they concern:

(a) biological material which is isolated from its natural environment or produced by means of a technical process even if it previously occurred in nature;

(b) without prejudice to Rule 28, paragraph 2, plants or animals if the technical feasibility of the invention is not confined to a particular plant or animal variety;

(c) a microbiological or other technical process, or a product obtained by means of such a process other than a plant or animal variety.

According to the Opponents, any inventions falling outside of the list provided by Rule 27 should not be considered patentable. The Opponents thus argued that only technical inventions based on genetic engineering or the targeted modification of breeding traits, where the gene sequence is known, qualified as "biotechnological inventions". Since the "bush allele" of the watermelon invention was uncharacterised and discovered rather than technically introduced, the Opponents submitted that the invention did not fall under this definition, and was therefore not covered by Rule 27 EPC. The Opponents also attacked the patent on the grounds that Article 53(b) EPC specifically mentions "plant varieties". They contended that Rule 27(b) EPC implied that only "biotechnological inventions" (e.g., transgenic plants) are patentable, and this conventionally bred plant was not one.

Additionally, the Opponents noted that, per G2/07 (Broccoli) and G1/08 (Tomatoes) a process could only escape the "essentially biological processes" exclusion if it included a technical step that "by itself introduces a trait into the genome or modifies a trait in the genome" (an analogy can be seen here with software inventions, in which the location of the technical solution is paramount for patentability). The Opponents submitted that the technical steps used in the invention, such as inducing triploidy (e.g., with colchicine), were merely a "technical topping". According to the Opponents' argument, these steps were not decisive for obtaining the inventive characteristic (the bush trait) and were not sufficient to render the process as a whole "biotechnological".

G 3/19 provisions upheld and Rule 27 clarified

The Board of Appeal gave these arguments short shrift. The Board of Appeal found that, for the product claims, the key determining fact was the 2013 filing date of the application and that the transitional provisions of G 3/19 were clear in stating that the interpretation from G 2/12 (Broccoli/Tomato II) applied to the case. Importantly, under G 2/12, the exclusion of essentially biological processes does not have a negative effect on the allowability of a product claim. By contrast, had the case been filed after 2017, the ruling of G 3/19 would have applied and the claims "would likely be excluded from patentability". For the method claims, the Board of Appeal found they were not essentially biological processes to begin with, as they related to fruit production (pollination) and not plant breeding (sexual crossing and selection).

In addition, the Board of Appeal also found the Opponents' reading of Rule 27 EPC to be incorrect. For the Board of Appeal, Rule 27 EPC provides an open list of what is patentable, not a closed list, and therefore does not imply that non-biotechnological plants are unpatentable. The correct test, the Board of Appeal noted, stemmed from G 1/98 and was whether the claims were directed to a specific plant variety. In this case, they were not; the "bush" allele can be introduced into any watermelon genetic background, so the technical feasibility is not confined to one variety.

Inventive step and sufficiency

The Opponents also argued a lack of inventive step (Article 56 EPC) and insufficiency (Article 83 EPC). The inventive step objection was based on the idea that the bush trait was a mere "discovery" from a home garden and applying known polyploidy techniques was obvious. The Board of Appeal disagreed. For the Board of Appeal, the claimed plants are not the original garden discovery, but were new triploid plants with a clear technical effect of higher planting density. As the prior art associated short vines with small fruit, the Board of Appeal found it was not obvious to create a short-vined plant that retained normal fruit size.

The insufficiency objection argued that because the "bush allele" was not genetically characterised, the skilled person could not reproduce the invention without undue burden. The Board of Appeal dismissed this by pointing to the seed deposit. The very purpose of depositing biological material under Rule 31 EPC, the Board of Appeal explained, is to "enable the invention to be carried out" precisely when it "cannot be described in the patent (application) in such a manner".

The Board of Appeal thus dismissed the appeal and maintained the patent as granted. A request to refer questions to the EBA was also rejected, as the Board of Appeal found all the relevant legal points to be clearly answered by existing EBA case law.

Final thoughts

The EPO clearly has little appetite to reopen the debate and add to the salad of case law on this issue. Whilst the EBA decisions G2/07 (Broccoli) and G1/08 (Tomatoes) were discussed in G3/19, in this case the Opponents attempted new arguments based on these decisions that were not considered by the EBA. The Opponents' "technical topping" argument was based on the position that the steps in the watermelon patent (like using colchicine to induce triploidy) did not meet the high bar set by G2/07, as they did not "introduce" the inventive bush trait itself. The Opponents' argument that G2/07 and G 1/08 implied a "clear characterisation of the relevant genetic information" (i.e., a known gene sequence) was necessary for patentability, was also an interpretation of these previous decisions that was not considered by the EBA in G3/19. However, the Board of Appeal was nonetheless clear in its view that the EBA's decision in G3/19 did not mean that G2/12 can be forgotten. Patents for plants and animals produced by essentially biological processes filed before 1 July 2017 remain valid.