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THE WRINKLED TOMATO CASE (State of Israel)

EP1211926 B1 - Method for breeding Tomatoes having reduced water content and product of the method
EP 1211926 B1

Title: Method for breeding Tomatoes having reduced water content and product of the method
Proprietor: State of Israel - Ministry of Agriculture
Opponet: Unilever
Status: pending at Enlarged Board of Appeal (T 1/08)


After starting the Broccoli case in 2007, a second case related to “essentially biological processes for the production of plants and animals” (Art 53b of the European Patent Convention) was forwarded to the Enlarged Board of Appeal of the European Patent Office in May 2008. The patent EP 1211926 on tomatoes is owned by the Ministry of Agriculture of the State of Israel. Together with the first case (G2/07) this second case (G1/08) will become precedent for the question of patentability of conventionally bred plants and animals in Europe.


Basic Data for the Wrinkled Tomato      T 1/08

EP1211926 B1 granted at the   26/11/2003

The patent is granted in Europe, in AT, DE, ES and in AU, CN, US. Situation in IL and JP unclear.

Applicant: STATE OF ISRAEL-MINISTRY OF AGRICULTURE (IL)

Representative: Vossius & Partner, Siebertstrasse 4, 81675 München

Priority document: IL19990131509  19/08/1999

Publication of application: WO0113708 A1 01/03/2001;   EP1211926 A1 12/06/2002

VERFAHREN ZUR ZUCHT VON TOMATEN MIT NIEDRIGEM WASSERGEHALT UND PRODUKT DIESES VERFAHRENS

METHOD FOR BREEDING TOMATOES HAVING REDUCED WATER CONTENT AND PRODUCT OF THE METHOD
PROCEDE PERMETTANT DE CULTIVER DES TOMATES AYANT UNE TENEUR EN EAU REDUITE ET PRODUIT OBTENU AU MOYEN DE CE PROCEDE

Opponent: Unilever N.V. NL-3013 AL Rotterdam / NL

Representative of Opponent: Tjon, Hon Kong Guno (Unilever Patent Group)

Date of oral proceedings: 16/03/2006

Dispatch of interlocutory decision in opposition: 29/05/2006

Appeal(s) following opposition: Appeal received  08/08/2006 No. T1242/06                       

Appeal received  07/08/2006 No. T1242/06

Dispatch of interlocutory decision from Technical Board: 08.04.2008    



Technical Background: The Wrinkled Tomato Case (G1/08)

After starting the Broccoli case in 2007, a second case related to “essentially biological processes for the production of plants and animals” (Art 53b of the European Patent Convention) was forwarded to the Enlarged Board of Appeal of the European Patent Office in May 2008. The patent EP 1211926 on tomatoes is owned by the Ministry of Agriculture of the State of Israel. Together with the first case (G2/07) this second case (G1/08) will become precedent for the question of patentability of conventionally bred plants and animals in Europe.

 

The patent

The patent describes a process of crossing widely used tomato plants from one subspecies (Lycopersicon esculentum) with other (wild) species.  By selecting plants having fruits with a reduced water concentration the patent aims for tomatoes useful in the tomato industry for the use in products such as ketchup or sauces.

 
Besides the breeding of the tomato, which simply follows the normal steps of crossing and selection, the patent adds an additional step of leaving the fruit with the plant after the point of normal ripening so that its wrinkling quality can be  observed (this is related to dehydration); this can then help in making a decision in selecting the seeds for the next steps of crossing.

 
The decisive claim 1 reads:

“A method for breeding tomato plants that produce tomatoes with reduced fruit water water content comprising the steps of:

crossing at least one Lycopersicon esculentum plant with a Lycopersicon spp. to produce hybrid seed;

collecting the first generation of hybrid seeds;

growing plants from the first generation of hybrid seeds;

pollinating the plants of the most recent hybrid generation;

collecting the seeds produced by the most recent hybrid generation;

growing plants from the seeds of the most hybrid generation;

allowing plants to remain on the vine past the point of normal ripening; and

screening for reduced fruit water as indicated by extended preservation of the ripe fruit and wrinkling of the fruit skin.”

 

Further, the  “tomato fruit characterized by a capability of natural dehydration while on a tomato plant” is also claimed (claim 15) by the patent.


The history of the patent

The patent was granted by the European Patent Office in 2003 despite the fact that the patent consists of nothing else but essentially biological processes for the production of conventional tomato varieties. It was opposed by the Unilever company, which raised objections under Art 53b, EPC. According to Unilever the patent violates the prohibition on patenting “essentially biological processes for the production of plants and animals” or “plant varieties”. Further grounds for opposition were that the process is not new and not inventive. During the opposition process the patent was partially changed, but both Unilever and the patent holder filed an appeal against this decision.


The outstanding decision

The Technical Board of Appeal decided to forward the patent to the Enlarged Board of Appeal, accompanied by the following three 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? ”

 
These three questions (referred to as G1/08) will be decided by the same Enlarged Board of Appeal as decided the Broccoli case (G2/07), thus becoming a precedent for defining the legal interpretation of Art 53b, the “essentially biological processes for the production of plants and animals”. The decision can not be expected before 2009. Third party observations may be sent until the end of October 2008.

 

Some implications and comments

The reading of the claim cited shows clearly that the patent consists only of quite usual and common breeding processes . The idea of crossing one subspecies with another is trivial and the additional idea of leaving the fruits with the plant follows the usual process of observing phenotypical characteristics for selecting plants of interest.

It is very astonishing that the patent was granted at all by the EPO, since it is in conflict with several of the EPC's regulations. But the questions forwarded to the Enlarged Board of Appeal only deal with the interpretation of essentially biological processes. This is also the general frame for interventions by third parties. Nevertheless in the observations forwarded to the Enlarged Board one can mention the general political and legal context such as

-         Biopiracy: the patent claims any wild species of tomatoes which get crossed with the aim of getting a tomato fruit with less water concentration. Most relevant in this context (as mentioned in the patent) seems to be a subspecies called Lycopersicon hirsutum, which originates in southern Ecuador to central Peru and is known to be very important for breeding in tomatoes since it is resistant against several pests.

-         General threat to world food security: If patents like this are granted on processes for normal breeding, even covering related food (as it is the case with both, the Broccoli and the Tomato case), this leads to a complete take over of the food production chain by the patent holders. It results in the end in open source breeding activities (as even guaranteed by the breeders exemption in international plants breeders law) and the end of free exchange of seeds between farmers as being practised in development countries. Further in many cases patents go along with higher prices, thus they are likely to create additional bottlenecks in the ongoing world food crises in developing countries mostly related to rising prices.