Oral Hearing for “Tomatoes” and “Broccoli” Opposition

Boards of Appeal

Art 21 (1) of the European Patent Convention establishes tribunals known as “Boards of Appeal” to hear appeals from the Receiving Section, the Examining Divisions and Opposition Divisions, and the Legal Division of the European Patent Office.  In that respect they perform analogous functions to the hearing officers who hear appeals from examiners or determine applications by other parties on behalf of the Comptroller or Chief Executive of the UK Intellectual Property Office.

Enlarged Board of Appeal

In the UK appeal from a hearing officer lies to the courts but as there is no pan-European patents court the highest tribunal of the European Patent Office is a body known as the “Enlarged Board of Appeal” that is established by  art 22 (1) of the Convention to

  • decide on points of law referred to it by Boards of Appeal;
  • give opinions on points of law referred to it by the President of the European Patent Office; and
  • decide on petitions for review of decisions of the Boards of Appeal.


When the European Patent Office grants a European patent, it grants not a unitary intellectual property right having equal effect throughout Europe like a Community trade mark or a registered Community design but a series of national patents for each of the countries for which the “patentee” (owner of the European patent) seeks protection. Thus, a European patent designating the UK is treated for all practical purposes as a patent granted by the Intellectual Property Office in Newport.   If France and Germany are also designated, the European patent takes effect in those countries as though it were a patent granted by the French intellectual property office or the German patents and trade marks office.   If a third party in say England objects to the grant and seeks to revoke it he or she may apply to the Patents Court or counterclaim in patent infringement proceedings for revocation.   If he or she succeeds, the European patent is revoked in the UK but it remains in effect in France, Germany and all the other countries for which it is granted unless and until the patent is revoked there.


However, there is a short period after the patent is granted in which an objector can apply for the European patent to be revoked in all the countries for which it is designated. That process is called rather confusingly “opposition”.   Art 99 (1) of the EPC provides:

“Within nine months of the publication of the mention of the grant of the European patent in the European Patent Bulletin, any person may give notice to the European Patent Office of opposition to that patent, in accordance with the Implementing Regulations. Notice of opposition shall not be deemed to have been filed until the opposition fee has been paid.”

Such an opposition applies to the European patent in all the states in which it was granted (art 99 (2)).

An application for revocation of a European patent can be made to an Opposition Division of the European Patents Office on any of the following grounds:

“(a) the subject-matter of the European patent is not patentable under Articles 52 to 57;

(b) the European patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art;

(c) the subject-matter of the European patent extends beyond the content of the application as filed, or, if the patent was granted on a divisional application or on a new application filed under Article 61, beyond the content of the earlier application as filed.”

The Division consists of 3 technically qualified examiners, at least 2 of whom shall not have taken part in the proceedings for grant of the patent to which the opposition relates. An examiner who has taken part in the proceedings for the grant of the European patent may not chair the Division. The members of a Division may entrust the examination of an opposition to one of their number. The Division can revoke, maintain or amend the European patent.   Decisions of the Opposition Division can be appealed to a Board of Appeal under art 21 and from there a reference can be made to the Enlarged Board of Appeal.

Tomatoes and Broccoli

The European Patent Office has today announced that the Enlarged Board of Appeal will hold a public hearing on 20 and 21 July 2010 to determine whether patents granted to the Israeli Ministry of Agriculture for a method of breeding tomatoes having a reduced water content and to Plant Bioscience Ltd. for selective increase of the anti-carciogenic glucosinolates in brassica species are patentable (see “Oral Proceedings to be held in the Tomatoes and Broccoli Cases” 3 Feb 2010). Both cases are concerned with the exclusion of essentially biological processes for the production of plants under art 53 (b) of the Convention.

Importance of the Reference

The reason for the exclusion of plant or animal varieties or essentially biological processes for the production of plants or animals other than microbiological processes or the products thereof may be because plant varieties are already protected by plant breeders’ rights and animals by rules safeguarding bloodstock and pedigree. However, there is also some reticence in Europe about the idea of life forms being patentable inventions. It is significant that art 53 (b) finds itself in the same article as the prohibition of inventions that are contrary to ordre public or morality rather than art 52 (2) which excludes such things as computer programs and methods of doing business as such.


About Jane Lambert

I am a barrister specializing in intellectual property, technology, media and entertainment and competition law. I specialize in helping SME (small and medium enterprises) protect and exploit their investment in brands, design, technology and the arts. SME require intellectual property (legal protection for their intellectual assets) at least as much as big business but their limited means restrict the way they can use it. Looking after such clients wisely requires skills and knowledge which have taken me years to learn.
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