Dear all
in our meeting in Munich, we discussed that we should have a look into recent files for patents intended to be granted, to find out if the EPO considers mutations (and plants) per se patentable or only those mutations (and plants) that are induced technically.
Anne Charlotte provided us with a list of relevant cases, some of them being applied after July 2017.
One of these is especially relevant for the question: EP3984355. It is on flowers, in this case the mutations were found in previously existing plants (mutations were not induced). The applicant, supported by Mr Kock, argued that mutations caused by sunlight would be patentable. The EPO agreed, however, they made a distinction of spontaneous mutations found in the plant (not intentionally induced) and those mutations that occur after technical processes (using sunlight).
Thus the EPO was of the opinion that the applicant has to show that a process for mutagenesis was used and the mutations were not simply detected.
The EPO objected the idea to solve the problem by a disclaimer, because the patent description did not reveal technical processes in the meaning of G1/08.
they only want to grant a patents on marker genes and their usage, but not on plants.
This seems to be an interesting decision (not confirmed by board of appeal). The arguments of the EPO show that spontaneous mutations are not considered as patentable, while same mutation triggered by mutagenesis are.
Of course, such a decision shows the way forward to the patent applicants: If they first expose the plants to sunlight and only afterwards detect the mutation, they can have a patent (in this case, the disclaimer would be accepted as a solution).
It also shows that the EPO will stick to its opinion that random mutagenesis is not only a technical process (no doubt) but that the plants derived from these processes are technical inventions in the meaning of EU Directive 98/44 (wrong).
It also shows that some of our arguments will benefit from an update.
I will try to include these findings in our new report.
I can give further explanations in our next zoom meeting, if needed.
Cheers
Christoph