In an order issued on July 31, 2024 (UPC_CFI_195/2024), the Hague Local Division of the Unified Patent Court (UPC; hereinafter "the Court") granted a preliminary injunction in favor of Amycel LLC, a developer of mushroom strains. The key issue of the patentability of mushrooms was addressed.
The patent in dispute (EP1993350, hereinafter "the patent") is owned by Amycel and relates to the mushroom strain BR06 (also known as "Heirloom"), a brown mushroom marketed in many countries.
In May 2024, Amycel brought an infringement action before the UPC against a Polish farmer (hereinafter "the Defendant"). According to Amycel, the Defendant infringed the patent by producing and selling the brown mushroom strain "Cayenne." Amycel produced phenotypic and genetic analyses to demonstrate the genetic and phenotypic identity of the "Heirloom" and "Cayenne" strains.
The Defendant raised the invalidity of the patent, invoking, among other things, a ground for exception to patentability. The Defendant argued that mushroom strains should be treated as plant varieties and, therefore, should not be patentable under Article 53(b) of the European Patent Convention (EPC), which excludes from patentability "plant or animal varieties or essentially biological processes for the production of plants or animals." The Defendant supported this argument by pointing out that the UPOV Convention (International Union for the Protection of New Varieties of Plants) allows mushroom strains to be protected as plant varieties.
The Court clarified that the exception to patentability referred to in Article 53(b) EPC must be interpreted restrictively, in line with the decision of the Enlarged Board of Appeal of the European Patent Office G2/12 ("Tomatoes II").
The Court concluded that the exception applies only to plant varieties and animal breeds and considered that fungi, belonging to the kingdom Fungi, are taxonomically distinct from the plant and animal kingdoms.
The Court also referred to proposal CA/56/17 of the President of the EPO of June 6, 2017, concerning the new Articles 27(b) and 28(2) of the Implementing Regulations to the EPC (paragraph 64): "The proposed new paragraph 2 of Rule 28 EPC explicitly refers to Article 53(b) EPC and replicates the term 'essentially biological process'. It furthermore employs the terms 'plants or animals', as in Article 53(b) EPC. This clarifies that plants and animals as well as propagation materials thereof are covered by the exclusion from patentability, but not any plant- or animal-derived products such as fur or meal, or even other products such as fungi or yeasts."
On the basis of this reasoning, the Court concluded that mushroom strains or varieties are not excluded from patentability under Article 53(b) EPC.
This position of The Hague local division is in line with the practice of the European Patent Office and reassures mushroom producers. However, this is an order for provisional measures. As the Defendant has filed an invalidity action seeking revocation of the patent before the Central Division in Milan, the question of the patentability of mushroom strains may be raised again. We will, of course, watch for future decisions on this matter.
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