EPO has Final Say on Monsanto's Disputed European Patent on Herbicide Resistant Plants

Concluding years of opposition and appeals proceedings, the European Patent Office (EPO) Technical Board of Appeal (TBA) has decided to uphold Monsanto Co.'s European patent relating to the production of herbicide-tolerant plants (EP 546090). The patent covers, among other things, methods for producing genetically modified plants, including crop plants such as corn, wheat, rice soybean and flax, which are resistant to a specific herbicide. EPO granted the patent on June 19, 1996, but the original version was amended to a more limited form following opposition proceedings heard by the EPO Opposition Division in April 2000. Monsanto applied to set aside the decision of the Opposition Division. In 2001, non-governmental organization Greenpeace and Swiss biotech company Syngenta AG appealed the decision on the basis that plant varieties are excluded from patentability. The recent pronouncement of the TBA maintains the limited version of the patent. The decision is final as to the European patent, although revocation proceedings may still be instituted before the national courts. Under the European Patent Convention and the European Directive on the Legal Protection of Biotechnological Inventions (98/44/EC), European patents may not be granted for plant or animal varieties, or "essentially biological" processes for the production of plants or animals (e.g. crossing or selection). The Convention and Directive do, however, authorise the patenting of biological material that has been isolated from its natural environment or produced by means of a technical process, as well as the patenting of inventions concerning plants or animals if the "technical feasibility" of the invention is not confined to a particular plant or animal variety. For the EPO press release on the decision of the Technical Board of Appeal, see: http://www.european-patent-office.org/news/pressrel/2005_04_06_2_e.htm Summary by: Rosa Kim