IP Cases & Articles

The Tomato Case - G2/12 All In A Stew

The Technical Board of Appeal in the tomato case (T-1242/06) issued an interlocutory decision on 31 May 2012 referring yet further questions to the Enlarged Board of Appeal. This time the questions relate to the patentability of product (plant) claims following the opponent’s (Unilever’s) request that further questions should be referred to the Enlarged Board.

The new Enlarged Board of Appeal case is pending as G2/12 and the three questions regarding the patentability of plants referred to the Enlarged Board of Appeal are set out here. However, Unilever has now withdrawn its appeal.

T-1232/06 Questions

  1. Can the exclusion of essentially biological processes for the production of plants in Article 53(b) EPC have a negative effect on the allowability of a product claim directed to plants or plant material such as a fruit?
  2. In particular, is a claim directed to plants or plant material other than a plant variety allowable even if the only method available at the filing date for generating the claimed subject-matter is an essentially biological process for the production of plants disclosed in the patent application?
  3. Is it of relevance in the context of questions 1 and 2 that the protection conferred by the product claim encompasses the generation of the claimed product by means of an essentially biological process for the production of plants excluded as such under Article 53 (b) EPC?

The question on everyone’s lips is: can the Enlarged Board of Appeal continue with G2/12 now that Unilever has withdrawn its appeal? There is no precedent for this situation and no case law on this specific point.

However, can the Enlarged Board of Appeal really proceed with a case, if the appellant (who raised the objection that led to the referral) has withdrawn from the appeal?

It would appear that G2/12 may have to be terminated without an opinion of the Enlarged Board of Appeal.

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