T 1045/16 (Virus-resistant melons/MONSANTO) 08-03-2021

I. An appeal was filed by the patent proprietor (appellant) against the decision of the opposition division to revoke European patent No. EP 1 962 578. The patent has the title "Closterovirus-Resistant Melon Plants".

II. Opponents 1 and 2 are respondents I and II to this appeal, respectively.

III. In the decision under appeal, the opposition division considered a main and five auxiliary requests. They held that all of these requests failed to meet the requirements of Article 83 EPC.

IV. With the statement of grounds of appeal, the appellant maintained as a main request that the patent be maintained as granted and also submitted sets of claims of auxiliary requests 1 to 7. Both respondents replied to the statement of grounds of appeal.

V. Claim 1 as granted reads:

1. A CYSDV-resistant plant of the species Cucumis melo, said plant comprising an introgression from a plant of melon accession PI313970, which introgression comprises a CYSDV-resistance-conferring QTL or a CYSDV-resistance-conferring part thereof linked to at least one marker located on the chromosome equivalent to linkage group (LG) 6 of melon accession PI313970, wherein said marker is E11/M49-239, and wherein said QTL or said part thereof is present in homozygous form.

Claim 1 of each of auxiliary requests 1 to 7 is an amended version of the above claim, but each retains the above language.

VI. The following documents are referred to in this decision:

D1: McCreight J.D., "Molecular and phenotypic variation in melon Pl 313970", Proceedings Cucurbitaceae, ISHS 2000 Acta Hort, 510, 235-239.

D3: Printout of web page from http://www.ars-grin.gov/cgi-bin/npgs/acc/display.pl?1234456

D13: McCreight J.D. and Wintermantel W.M., "Genetic Resistance in Melon PI313970 to Cucurbit yellow stunting disorder virus", HortScience, 2011, 46, 1582-1587.

D14: Mccreight, J.D. and Wintermantel, W.M., "Resistance in Melon PI313970 to Cucurbit Yellow Stunting Disorder Virus", HortScience, 2010, 46(12).

D20: Declaration of Dr de Vries dated 1 July 2016.

VII. The arguments of the appellant, relevant to the decision, are summarised as follows.

Admissibility of the opposition of opponent 2

The opposition of opponent 2 was not admissible because it was not clear if the natural persons who signed the notice of opposition, for example Mr Christoph Then, were acting as an opponent in their own name or as a representative of a group of natural persons or as representative of the legal persons identified in the notice.

For example, Mr Then signed the opposition on behalf of the organisation "No Patents on Seeds" but the notice of opposition did not identify whether "No Patents on Seeds" was a member of the joint opposition or if Mr Then himself was a member of the joint opposition.

The position of the "Arbeitsgemeinschaft bäuerliche Landwirtschaft" was even less clear. The group of persons or legal person named "Arbeitsgemeinschaft bäuerliche Landwirtschaft" was identified as a member of the joint opposition in the notice of opposition, however, it was unclear which natural person represented the group of persons or the legal person.

According to the established case law of the Boards of Appeal, it had to be clear throughout the opposition procedure who the individual members of the common opponents were (see headnote 3 of decision G 3/99). In the present case, it was not known, if each of the natural persons, legal persons or organizations listed in the opposition, was a member of the joint opposition.

It was highly relevant to know whether a group of the natural or legal persons identified still existed or wished to participate in the opposition proceedings.

Disclosure of the invention - Article 83 EPC

All claim requests - claim 1

The opposition division's conclusions with regard to insufficiency of disclosure were incorrect. The plants identified by the melon accession No. PI313970 were publicly available on the priority date of the patent and at the filing date of the opposition, as evidenced by document D3 and were publically available on the date of writing the statement of grounds of appeal, as evidenced by the patent itself and by documents Dl, D13 and D14. In fact, plants of the accession PI313970 could be ordered directly from the website of the US National Plant Germplasm System.

It was the task of Institutes like the US National Plant Germplasm System (NPGS) to maintain the accession. This task included maintaining genetic diversity in the accessions. These Institutes implemented special measures to avoid genetic drift or loss.

Document D3 showed that the melon accession in question was maintained by the NPGS genebank located at the North Central Regional PI Station of the US Department of Agriculture (the USDA was cited repeatedly in document D3, for example at the end of page 2; North Central Regional PI Station was cited in the first paragraph of document D3).

The US National Plant Germplasm System which was tasked with maintaining the accession saw its mission as safeguarding genetic diversity of agriculturally important plants. Thus, assuming that the plants were maintained by this Institute in manner causing genetic drift or trait loss was not reasonable.

VIII. The arguments of the respondent I, relevant to the decision, are summarised as follows.

Disclosure of the invention - Article 83 EPC

All claim requests - claim 1

The claimed invention was not disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. The opposition division had been right to hold that the rationale for deposits of biological material was to ensure availability of the biological material to the public.

The requirement for a deposit to satisfy the requirements of Article 83 EPC could therefore only be circumvented if the material was available to the public without restriction (Guidelines for Examination, F-III, 6.2 and 6.3) over the whole term of the patent (see decision under appeal, point 6.5.7).

It was therefore not sufficient to show that plants with the name PI313970 were available before the priority date. Instead, there should also be evidence that plants with the resistance-conferring QTL and the marker were and would remain available over the entire period of the patent term.

Although plants named PI313970 could be ordered from the North Central Regional PI Station of the US Department of Agriculture after the effective date of the opposed patent, it was unclear if the resistance QTL and marker were still present in any of the seeds that could be so ordered. Moreover, the depository institution did not guarantee availability in the future.

Furthermore, none of the seed lots mentioned in any of documents cited by the patent proprietor provided evidence of the availability of a plant having the resistance and could certainly not ensure availability over the entire term of the patent.

None of the documents mentioning PI313970 related to seeds deposited under the Budapest Treaty and could therefore, by definition, not ensure availability of a seed lot over the entire term of the patent, even if the QTL and the AFLP marker were present in any of the seed lots mentioned.

IX. The arguments of respondent II, relevant to the present decision, are summarised as follows:

Disclosure of the invention - Article 83 EPC

All claim requests - claim 1

To answer the question of whether the biological material of the invention was made available to the public and would remain available as required by Article 83 EPC it was necessary to compare the terms and conditions of the Budapest Treaty with those of the institution US National Plant Germplasm System, which maintained the PI313970 accession.

According to the Budapest Treaty, a deposit at an International Depository Authority ensures that the relevant biological material is available and viable during the entire term of the patent. This was set out in the Regulations, published in the Annex of the Treaty. These regulations governed the deposition, storage, viability testing, furnishing of samples, the termination, limitation or discontinuance of the deposit. These measures were necessary to safeguard the availability of the biological material over the minimum period of 30 years as specified by the Treaty. However, these rules and regulations were not adequately provided for in the US National Plant Germplasm System. Even if the US National Plant Germplasm System were in a position to prevent the loss of genetic features, it did not have any obligations in relation to deposition, storage, furnishing of samples, or the potential termination, limitation or discontinuance of the deposit, in contrast to those obligations provided to the entitled parties of the Budapest Treaty.

In addition, the EPC required a deposit according to the Budapest Treaty. This requirement could not simply be replaced by a deposition at a genebank which had no obligations as those under the Budapest Treaty.

Therefore, the invention did not fulfill the requirements of Article 83 EPC and the patent had to be revoked.

X. The board appointed oral proceedings and informed the parties of its preliminary appreciation of the appeal. In its communication pursuant to Article 15(1) RPBA, the board stated that "It appears to be common ground that, to carry out the invention in the sense of Article 83 EPC, the person skilled in the art requires access to propagating material (e.g. seeds) containing the CYSDV-resistance-conferring QTL and marker, identical to or derived from melon accession PI313970. It is further not in dispute that there has been no deposit of such material with a recognised depositary institution as set out in Rule 31(1)(a) EPC ".

The board also stated that it understood "that the appellant's position is that the relevant biological material was and remains publically available in the sense of Rule 31(1)(a) EPC at the US National Plant Germplasms System" and went on to identify "that a relevant question in this context was whether "available to the public" in the sense of Rule 31(1)(a) EPC means the same as in Article 54 EPC, and if the meaning is not the same then whether the biological material must be generally publically available, such as e.g. E. coli bacteria, or whether a deposit of a specific biological material at the US National Plant Germplasms System could equally fulfill the notion of "public availability" within the meaning of the provision at issue".

XI. Both the appellant and respondent I informed the board in writing that they would not attend the oral proceedings and that their requests for oral proceedings were withdrawn.

XII. The board cancelled the oral proceedings and informed the parties that the procedure would be continued in writing.

XIII. The requests of the appellant are that the decision of under appeal be set aside and that the case be remitted to the opposition division for further prosecution. Alternatively, the patent should be maintained on the basis of one of auxiliary requests 1 to 7 submitted with the statement of grounds of appeal.

XIV. The requests of the respondents are that the appeal be dismissed. Respondent II further requested oral proceedings in case their request that the appeal be dismissed was not allowed.