https://academic.oup.com/jxb/article/63/3/1069/473047
This is from the discussion towards the end:
“The USA is considered to have the most liberal patent law. In 1980, the Supreme Court in Diamond v Chakrabarty (see note 15) had to consider whether a genetically engineered bacterium, capable of breaking down multiple components of crude oil, was patentable. The patent examiner in that case had rejected the application on two grounds: (i) that micro-organisms are ‘products of nature’ and (ii) that as living things they were not patentable subject matter under the US patent law. The Supreme Court brushed aside these concerns, famously referring to the objective of Congress that the patent law was to ‘include anything under the sun that is made by man’ as patentable. Accordingly, the Court ruled that the micro-organism qualified as patentable subject matter. However, the Court also noted that the patent claim under consideration ‘was not to a hitherto unknown natural phenomenon, but to a non-naturally occurring manufacture or composition of matter—a product of human ingenuity’ (see note 16). In other words, some human intervention was required to render a biological innovation as patentable.
The European Patent Office focuses upon the necessity for a claimed invention to have a ‘technical’ character. Rule 27 Implementing Regulations to the Convention on the Grant of European Patents defines patentable biotechnological inventions as those which concern:
(i) biological material which is isolated from its natural environment or produced by means of a technical process even if it previously occurred in nature;
(ii) plants or animals if the technical feasibility of the invention is not confined to a particular plant or animal variety;
(iii) a microbiological or other technical process, or a product obtained by means of such a process other than a plant or animal variety.
This requirement that inventions have a technical character was considered by the EBA in the Broccoli and Tomato cases to be an important matter in its consideration of whether plant breeding methods were patentable. In examining the historical documents which led up to the formulation of the EPC in 1960, the EBA observed that, with the creation of new plant varieties for which a special property right was going to be introduced under the subsequent UPOV Convention in 1960, the legislative architects of the EPC were concerned with excluding from patentability the kind of plant breeding processes which were the conventional methods for the breeding of plant varieties of that time. These conventional methods included, in particular, those based on the sexual crossing of plants deemed suitable for the purpose pursued and on the subsequent selection of the plants having the desired trait(s). These processes were characterized by the fact that the traits of the plants resulting from the crossing were determined by the underlying natural phenomenon of meiosis. This phenomenon determined the genetic make-up of the plants produced, and the breeding result was achieved by the breeder's selection of plants having the desired trait(s). That these were processes to be excluded also followed from the fact that processes changing the genome of plants by technical means such as irradiation were cited as examples of patentable technical processes.
The EBA also referred to the explanations given in the memorandum of the Secretariat of the Committee of Experts for agreeing to the replacement of the words ‘purely’ biological by the word ‘essentially’ was deliberate as reflecting the legislative intention that the mere fact of using a technical device in a breeding process should not be sufficient to give the process as such a patentable technical character. The EBA concluded that the provision of a technical step, be it explicit or implicit, in a process which is based on the sexual crossing of plants and on subsequent selection does not cause the claimed invention to escape the exclusion if that technical step only serves to perform the process steps of the breeding process (see note 17).
Conclusion
The determination of the EBA was that a process for the production of plants which is based on the sexual crossing of whole genomes and on the subsequent selection of plants, in which human intervention, including the provision of a technical means, serves to enable or assist the performance of the process steps, is excluded from patentability as being essentially biological within the meaning of Article 53(b) EPC. Thus the EBA confirmed that classical plant breeding is excluded from patentability. On the other hand, if a process of sexual crossing and selection includes within it an additional step of a technical nature, which step by itself introduces a trait into the genome or modifies a trait in the genome of the plant produced, so that the introduction or modification of that trait is not the result of the mixing of the genes of the plants chosen for sexual crossing, then that process leaves the realm of the plant breeding and, consequently, is not excluded from patentability. This principle applies only where the additional step is performed within the steps of sexually crossing and selection, independently from the number of repetitions, otherwise the exclusion of sexual crossing and selection processes from patentability could be circumvented simply by adding steps which do not properly pertain to the crossing and selection process, being either upstream steps dealing with the preparation of the plant(s) to be crossed or downstream steps dealing with the further treatment of the plant resulting from the crossing and selection process. The EBA noted that, for the previous or subsequent steps, per se patent protection was available. This will be the case for genetic engineering techniques applied to plants which differ from conventional breeding techniques as they work primarily through the deliberate insertion and/or modification of one or more genes in a plant.”
= new reply since forum marked as read
It really out to show lab equipment.
