SWISS PLANT VARIETY PATENT REVOKED

FIRST SWISS PLANT VARIETY PATENT REVOKED

Bio-farmer Peter Lendi looks with relief over his herb and camomile plots in the canton of Ticino, the most southern part of Switzerland. His family herb business is, at least for the moment, out of danger. He recently won a case in the Supreme Court against the German Pharmaceutical Multinational Degussa/Asta Medica. It is possible that if the court had decided otherwise he may have been obliged to close down his farm, and pay all the legal expenses. But now he is happy and people are congratulating him for his victory and for his courage in taking the case of the patented Manzana variety all the way through the courts.

Based in the Swiss mountains, Peter Lendi is the president of the Association of Bio-Herb Growers. He and the Association filed the lawsuit against the first patented plant variety in Switzerland about five years ago (Seedling, October 1990). For the herb growers their own future was at stake when the German company obtained a monopoly over a new plant variety, and even worse, over all future camomile plants having higher than existing levels of active ingredients. "The individual farmers will become completely dependant on big companies," observed Lendi. Although the German company was not putting its Manzana variety on the market, but was growing it in fields near Girona in Spain for in-house processing, he feared a future in which a few companies would control both breeding, and processing, and hold farmers as licensees or subcontractors. Conventional breeders or farmers, capable of producing camomile varieties with higher levels of active ingredients, would not have been allowed to commercialise them because of the Manzana patent.

An attempted interpretation

The Swiss patent office had granted the patent on the camomile variety Manzana on 30 September 1988, after a revision of its internal procedures rules. Since the patent law explicitly excludes plant varieties from patentability -- as does the European Patent Conventions (EPC) article 53b -- the patent office discovered a way around it: they created new internal rules for patent officers. The rules excluded only varieties if explicitly named, but allowed patents on all other biological forms of plants, such as families, genes, or simply plants. This interpretation of EPC article 53b was agreed earlier in a working group at the World International Property Organisation (WIPO). The Swiss tried to be the first to implement it. When this interpretation became known, it provoked loud protests from plant breeders and others. On the other hand, the participants in a European Patent Office (EPO) conference on biotechnology and intellectual property rights in January 1987 congratulated the Swiss patent office for its "courageous move". Granting the Manzana patent was a test case for the Swiss patent office. Since their new internal rules had no legal backing, Ciba Geigy Deputy Director and member of parliament, Felix Auer, tried to legalise it through a parliamentary initiative to revise the patent law. But the revision process was stopped in April 1991 because of large opposition against it.

Variety patent via a process patent?

In the meantime the law suit against the Manzana patent was filed in the Bern State Court, and debated until 1993. The court looked into the question of whether a patent on a plant variety can be justified based on the fact that the process to develop a new camomile variety can in itself be patented. The lower court stated that any further breeding with plant material leads inevitably to a new variety, and that the new product is therefore protectable under Plant Breeders Rights law. If breeding would not lead to a new variety, then patentability would be already excluded because the inventive step and novelty requirements would not be met. The court also held that the article to exclude all varieties from patentability (Swiss patent law Article 1a) supersedes any claim derived from a patented process. The lower court revoked the patent for these reasons, and because novelty in the breeding methods and the inventive step did not exist in the case of Manzana. Some of the different steps and techniques of breeding Manzana camomile were already known in the fifties, and others were published in scientific papers before the patent application. The decision of the first court would have had the effect of revoking the internal revised rules and interpretation of the Swiss patent office.

After this defeat on 16 December 1993, the German company appealed to the Supreme Court. Observers also hinted that the lawyers of the Federal Patent Office might have pushed the company in this direction because the Federal Patent Office was interested in a final decision by the Supreme Court. In its decision of last March 27, the Supreme Court confirmed the decision of the lower court to revoke the patent on Manzana. The arguments and reasons of the Supreme Court were slightly different from those of the lower court. The Supreme Court first pointed out that in the case of Manzana, novelty did not exist and that this was reason enough to revoke the patent. The court therefore did not formally address the question of whether a variety as such could fall under the patent claim if the process to produce it is patented. Nevertheless, the Supreme Court hinted that eventually it would not support the interpretation of the lower court and would rather support the interpretation of the government and the patent office.

The question now seems to centre on the future role and importance of Article 53b EPC, which excludes plant varieties from patentability. It seems that Supreme Courts in other European countries and the patent court in Munich do not want to formally decide on this delicate question as long as they can base their decisions on other questions. However, the recent decision of the EPO Board of appeal against a number of patent claims of the Belgium company Plant Genetic Systems for herbicide tolerant plants might turn the tide. While the discussion on the implications of this decision still rage in different circles, it seems that the EPO is saying that seeds and plants cannot be covered by patent claims as they normally end up as plant varieties, which -- according to article 53b -- cannot be patented.

What eventually could happen is a revision of the EPC with the deletion of article 53b. At least the Swiss government, in a formal position paper, came out clearly for this option. But given the strong European public opposition -- expressed recently by the European Parliament (see Seedling, March 1995) -- against patenting of life forms, this could be quite a troublesome and lengthy route for governments. Although there is no final decision on the most crucial question yet, the Swiss herb farmers can for the moment be proud of having won an important victory against a big pharmaceutical company and, even more important, against the Federal Patent Office's subtle move to dilute existing patent law by reinterpretation.

Miges Baumann may be reached at: SWISSAID, Jubiläumstrasse 60, CH-3000 Bern 6, Switzerland. Fax: (41-22) 351 27 83. Email: [email protected]