Patent

Spicy IP Fellowship 2016-17: Melancholy Melons-A Comment on the EPO’s Revocation of Monsanto’s Patent


In this post Divya Mirlay,examines the European Patent Office’s (“EPO“) recent revocation of a patent on virus resistant melons.  This is Divya’s second submission for the fellowship.

virus mielon

Opponents of patents on conventional breeding have a lot to celebrate over the EPO’s recent revocation of Monsanto’s patent on virus-resistant melons. The results of the oral proceedings revealed that the revocation was based on two grounds: First, that there existed at least one ground for opposition which prejudiced the maintenance of the patent and Second that the patent and the invention failed to meet the requirements of the European Patent Convention (“EPC”). Two days before the oral proceedings, India’s National Biodiversity Authority (“NBA”) had filed an observation regarding Monsanto’s non-compliance with India’s Biological Diversity Act, 2002, particularly Section 6 of the Act which requires Monsanto to obtain prior approval from the NBA before applying for the patent. The NBA emphasised the mandatory nature of the provision, as the source of biological material used in Monsanto’s invention was Indian. A brief description of the case is given below.

Monsanto’s patent related to a variety of melons which were resistant to a virus known as cucurbit yellow stunting disorder virus known to reduce the fruit yield. These virus-resistant melons were prepared by way of introduction of a gene from another melon plant using a conventional breeding method involving the use of a genetic marker. However, the gene responsible for the resistance was first derived from Cucumis Melo, an Indian melon variety which was included in the Russian VIR Database in 1961 and subsequently transferred to the U.S. Department of Agriculture in 1966 and has ever since been publicly available. The patent was granted on 4th May, 2011 (EP 1962578 B1) and had been opposed by a coalition of NGOs led by No Patents on Seeds, supported vehemently by the environmentalist Dr. Vandana Siva.

Anti-piracy crusaders have toiled long and hard against the EPO’s spree of granting patents in violation of the EPC. Monsanto has previously obtained patents which have been subsequently revoked by the EPO owing to a plethora of oppositions being filed. For instance, the EPO assigned Monsanto a patent on wheat under the title “plants” in 2003. Several NGOs including Greenpeace and Bharat Krishna Samaj opposed this, which ultimately resulted in its revocation.

The prohibition under Article 53(b) of the EPC states that European patents shall not be granted patents in respect of plant or animal varieties or essentially biological processes for the production of plants or animals.

Last year, the EPO’s Enlarged Board of Appeals (“EBA”) concluded in two cases, “Tomato II” and “Broccoli II” that the exclusion of patentability under Article 53(b) was not applicable to product claims and product-by-process claims. In other words, the product of an excluded process can still be patented, provided the claimed plant or material is novel and inventive and further, that the claim language can be found to define it. The EBA’s decision was met with great concern by NGOs such as No Patents on Seeds, which released a statement expressing the EBA’s biased attitude towards industries seeking to gain control over common resources.

The grim trend of revoke-by-opposition will soon run out of fuel. Organisations have expressed concerns over the need for politicians to ensure that the EPO functions in a transparent manner. The Administrative Council of the European Patent Organization is the supervisory body, which not only oversees the work of the EPO but also has the power to amend certain parts of the EPC. However with respect to Article 53(b) the Administrative Council continues to remain silent .

4 comments.

  1. Balakrishna

    The role of Berne Declaration in this process has not been adequately highlighted. The author may look into this as needed.

    Reply
  2. Suma

    The second ground for revocation has been incorrectly paraphrased (it relates to amendments), a review of the actual grounds for revocation given by the EPO in its decision would have been helpful. The patent was revoked due to a lack of sufficiency.

    Reply
    1. Divya

      Thank you, Ma’am for your comment. I should have been more specific with respect to the second ground, as you have rightly pointed out: Article 101(3)(b) pertains to revocation of the patent if the Opposition Division, on considering the amendments made by the proprietor of the patent during the proceedings, is of the opinion that the patent and the invention to which it relates do not meet the requirements of the EPC.
      As for the post, I sought to generally trace the EPO’s behavioral anomalies, rather than the grounds for revocation. I appreciate your inputs-Ill take a closer look henceforth.

      Reply

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