In T 915/10, the Examining Division considered the following claim:
"A method for producing a soybean plant tolerant to glyphosate herbicide comprising introducing into the genome of said plant event MON89788."
The Examining Division held that the claim included as an implicit feature a sexual crossing or selection process and refused the application. On appeal, the applicant filed a new claim:
"A method for producing a soybean plant tolerant to glyphosate herbicide as defined in claim 1, which method comprises introducing SEQ ID NO: 9 into the genome of said plant by transformation of plant cells with heterologous DNA."
The Board of Appeal held that the method as claimed was limited
by the introduction of the introduced trait by a genetic
engineering step and that the expression of the inserted DNA was
not the result of a plant breeding method. In addition, the Board
was satisfied that the method as claimed does not require or define
(either explicitly or implicitly) any step(s) of mixing genes of
plants by sexual crossing and subsequent selection.
Based on this decision, it seems likely that claims directed to
modification of the plant genome will be accepted if the claim
language makes it clear that the modification is carried out by
genetic engineering rather than conventional plant-breeding
techniques. It is therefore worthwhile when drafting such an
application to consider including suitable language to form the
basis for an amendment when prosecuting the application in
Europe.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
