用P. 坎迪耶 & Samini Thiruchelvam
其中包括植物育种的一个常见难题是如何保护自己的植物新品种. 在一般情况下, 有两种方法可以做到这一点 - 通过专利或植物品种保护.
植物新品种可以通过基因工程来创建. 可这样的新品种，受专利保护? 该植物品种, 虽然通过基因工程方法生产, 不能根据专利法的保护，因为它被明确排除在外. 然, 基因工程的过程可能有资格获得专利如果过程符合专利性标准. 但是植物育种者不是一个实验室技师，他不会有兴趣在短短保护微型生物过程. 植物育种者的兴趣更多的是对植物新品种的商业价值，为此，饲养员能获得独家代理权植物的种植，收获的材料，如水果, 植物汁液 (树液), 木, 花卉, 等. 在植物新品种法.
What this means is that natural processes, such as methods of cross-breeding, and the resulting plant varieties cannot be patented but may be eligible for protection under the New Plant Varieties Act.
然, recent court proceedings of European Patent No. 1211926 (referred to as the “Tomato” case) have proved otherwise. Briefly, the original claims of this patent were directed to a method for breeding tomato plants that yield tomatoes having reduced water content by means of cross-breeding. This patent was opposed by Unilever PLC for having method claims directed to an essentially biological process for the production of plants and animals. Such method for production is a non-patentable subject matter under the Article 53(b) of European Patent Convention (EPC).
The patentee, the Ministry of Agriculture of Israel, responded to the opposition by filing two subsequent appeals at the Enlarged Board of Appeal (EBA) in Europe.
In the court proceeding for the first appeal (Tomato I), the patent claims which were directed to the method of cross-breeding of a tomato plant were discussed. The Appeal Court ruled against the patentee as breeding methods, including sexual crossings of the plants and subsequent selection from the breeding, are excluded from patentability. Cross-breeding methods were defined as “essentially biological processes”, which is a non-patentable subject matter in Europe.
The patentee made a second appeal before the Appeal Court (Tomato II) by amending the patent claims to a plant product obtained from a method of cross-breeding. This type of claim is referred as product-by-process claim, wherein the claim is directed to a product produced by a specific process instead of the process itself.
The Court considered many aspects when handing out the decision for “Tomato II”. 结论是, it was decided that such product-by-process claims would not be excluded as plant varieties under the subject-matter of the claims are not limited or directed to a plant variety.
进一步说, the Appeal Court established that the term “essentially biological processes” must be interpreted narrowly and not to be extended to a product claim which is directly obtained from breeding process.
The point to be taken from this case is that there are various ways a patent claim can be constructed. Cross-breeding methods still remain unpatentable in Europe and in other jurisdictions. Yet, this case has opened up new possibilities of obtaining patents for new plant varieties by claiming a product of a cross-breeding instead of the cross-breeding method or the plant itself.
What if similar situation occurs in Malaysia? As noted above, Malaysia deems plant or animal varieties or essentially biological processes for the production of plants or animals to be non-patentable. It will be interesting to see how this provision is interpreted if a case similar to the “Tomato” case is discussed in the Malaysian court. For now, plant variety protection seems to be a better option for cross-breeders to obtain protection of their new plant varieties.
* first published in the August 2015 培养皿的问题 (www.bic.org.my/the-petri-dish)