Article 53(b) of the European Patent Convention bars the grant of patents for, inter alia, plant or animal varieties. There has been a conflict between appeal board decisions as to whether the application of this prohibition is the same for plants and animals and as to whether it applied only if that which was claimed was confined to a grouping of plant or animals at the low taxonomic classification of "variety" (which is more limited than species) or whether it precluded the grant of claims in which new plant or animal types were defined more broadly. The issue was referred to the Enlarged Board of Appeals in Novartis II/Transgenic plant. The Board held that the text of the Convention should be construed strictly so that when reference was made to a "variety" not being patentable, the prohibition did not apply if the claim was directed to a broader taxonomic grouping (that is to a species or higher classification). This decision is in accordance with the much earlier decision on the so-called Harvard mouse case and also with the EU's directive on patent protection for biotechnology and the EPO's own new rules (see our August 1999 Newsletter (N.S. 191) - these new rules do not apply directly to the present case).

In response to arguments that, if claims to specific varieties were prohibited it was illogical to allow claims that covered multiple varieties, the Board commented as follows:

The Board was, however, ruthlessly logical in its application of the prohibition where the subject matter was a single variety, holding that in such a case the ban on patentability was absolute and did not depend upon whether or not "essentially biological processes" had been used to create the variety so that plant varieties obtained by recombinant gene therapy were excluded from patentability. Nevertheless the Board recognized that a claim directed to the production of a new plant or animal variety by recombinant techniques would be patentable and that the direct product of that patented technique would still be an infringement of the claim to the production technique under Article 65 of the Convention even if that product was in fact a plant or animal variety.