Munich, 06 Apr 2005
US company Monsanto's European patent EP 546090 concerning the production of herbicide-tolerant plants is to be maintained in limited form. That is the decision of the competent Technical Board of Appeal of the European Patent Office (EPO) after a public hearing in appeal proceedings related to the patent. Apart from the proprietor, the parties to the proceedings were Syngenta, Greenpeace Deutschland and two private individuals. In 1997 they had already filed oppositions to the granting of the patent.
The patent at issue among other things describes methods for producing genetically modified plants, including crop plants such as corn, wheat, rice, soybean and flax, which are resistant to a specific herbicide.
The patent was granted by the EPO on 19 June 1996, and following opposition proceedings in April 2000 it was limited relative to the version originally granted. Appeals against the decision of the EPO Opposition Division were filed by Syngenta, Greenpeace and the patent proprietor in March 2001. While Monsanto requested that the decision be set aside, the other two parties appealed on different grounds, asserting among other things that the patent at issue concerned plant varieties, which as such are excluded from patentability.
Being the last central European instance to decide on European patent applications and patents, the rulings of the Boards of Appeal are final. If a European patent is not revoked centrally, revocation proceedings may be instituted before the national courts. * Intended for media use, not legally binding
Information for journalists
On 19 June 1996 the EPO granted patent EP 0 546090 to Monsanto in respect of its European patent application of 28 August 1991. Oppositions against the patent were filed within the nine-month period for doing so. Opposition proceedings ended in April 2000 and led to maintenance of the patent in amended form. Appeals against this decision of the EPO Opposition Division were filed in March 2001.
Patents on biotechnological inventions
Biotechnological inventions are in principle patentable. This principle is derived both from the European Patent Convention (EPC) - the legal basis for the granting of patents by the EPO - and from European Union Directive 98/44/EC on the legal protection of biotechnological inventions, adopted by the Council and the European Parliament in 1998.
The European Court of Justice has upheld the legality of the directive, further ruling in its decision that the directive takes due account of ethical concerns.
In June 1999 the Administrative Council of the European Patent Organisation, which includes representatives from all the EPC contracting states, decided that those requirements of the directive that were relevant to the European grant procedure should be implemented in the European Patent Convention. Accordingly, the EPO has been applying the provisions of the directive since September 1999.
The EPC and the EU directive authorise the patenting of biological material that has been isolated from its natural environment or produced by means of a technical process. European patents are not granted in respect of plant or animal varieties or essentially biological processes for the production of plants or animals; but animals and plants are not excluded from patentability if the technical feasibility of the invention is not confined to a particular plant or animal variety.
The appeals procedure before the Boards of Appeal of the European Patent Office
The legal means to review the grant of a European patent centrally are the opposition and appeal procedures before the EPO. An opposition can be filed by any third party within a period of nine months from mention of grant of the patent and may result in either revocation of the patent or its maintenance in full or in amended form. Oppositions are heard by an Opposition Division in a first-instance administrative procedure. In 2004, approximately 5.3% of the European patents granted were opposed and the Office handled about 2 000 opposition cases.
Appeals lie from decisions reached by the EPO at first instance in examination and opposition procedures. The Boards of Appeal of the EPO deal with appeals at second and final instance. They enjoy judicial independence and are composed of technically and legally qualified members who exercise the function of independent judges. They are comparable with the highest national courts acting in patent litigation cases. Their decisions are based on the European Patent Convention, the legal basis for the grant of European patents.
The EPC regulates the handling of patent applications under a single grant procedure in Europe. Under the EPC, patents may only be granted for inventions which are new, involve an inventive step and are capable of industrial application. Currently, there are 30 EPC contracting states: Austria, Belgium, Bulgaria, Cyprus, the Czech Republic, Denmark, Estonia, Finland, France, Germany, the Hellenic Republic, Hungary, Iceland, Ireland, Italy, Liechtenstein, Lithuania, Luxembourg, Monaco, the Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden, Switzerland, Turkey and the United Kingdom. A number of other countries are expected to accede in the near future.
The European Patent Office (EPO)
The EPO is the executive arm of the European Patent Organisation, an international organisation set up by the contracting states to the EPC. The EPO is not a European Union institution. It is responsible for the practical functioning of the European patent system. Its main task is to grant European patents in respect of inventions in all industrial sectors with validity in the EPC contracting states. This is done by means of a centralised examination procedure: on the basis of a single patent application, filed in one of the three official languages (English, French and German), it is possible to obtain patent protection in some or all of the EPC contracting states.
The Office receives approximately 180 000 patent applications per year, and since its creation in 1977 it has published over 1.8 million applications and granted more than 650 000 European patents. Its staff of over 6 000 are located at headquarters in Munich, a branch office at The Hague and sub-offices in Berlin and Vienna. The independent Boards of Appeal are located in Munich.
Public access to information on granted patents
The EPO provides for a maximum of transparency and information on its activities. Once a European patent application has been published, the file relating to it is open to inspection. This means that any member of the public can view the communications between the Office, its instances and the parties involved in the procedure. Such file inspections can be made online and are free of charge. Furthermore, all European patent applications and patents can be accessed on the Internet at www.espacenet.com, while any legal and procedural status information can be obtained from the EPO's epoline® server. Procedural information on the patent in suit can be retrieved from the Online European Patent Register.
For further information, please contact:
European Patent Office