Mushrooms may grow, but are not plants - thus patentable
In a significant development for the biotechnology and agricultural sectors, The Hague Court of First Instance of the Unified Patent Court (“UPC”) issued an order granting a preliminary injunction in favor of Amycel LLC against Szymon Spyra.
This decision underscores the importance of conducting thorough technical analysis in determining patent infringement.
The case
Amycel LLC is the holder of European Patent EP1993350 (“EP’350”), protecting the mushroom strain BR06 which is also referred to as “Heirloom”. The dispute arose when, in 2017, Amycel discovered that Szymon Spyra was producing and marketing a mushroom strain named “Cayene”, which allegedly infringed EP’350. Despite efforts to resolve the matter amicably, the negotiations proved unsuccessful. This led Amycel to initiate an infringement action in Poland in July 2023. Poland is not a UPC Contracting Member State.
The case took a significant turn when Amycel discovered that the “Cayene” strain was also being sold in several UPC Contracting Member States, including The Netherlands, Germany, France, and Italy. This prompted Amycel to file an action on the 14th of May with Court of First Instance of the UPC, seeking a preliminary injunction against Szymon Spyra.
Procedural issue: unreasonable delay
One of the critical issues addressed by Court of First Instance was whether Amycel acted with an unreasonable delay in bringing the UPC action. This could have led the court to reject the request for provisional measures under Article 62 of the Unified Patent Court Agreement (“UPCA”) and Article 211(4) of the UPC Rules of Procedure. In order for a preliminary injunction to be granted, one of the criteria to be met is that it was requested without undue delay.
Szymon Spyra argued that Amycel's nearly year-long delay after filing the Polish action should disqualify the request for urgency. However, the court dismissed this argument, noting that Amycel had during this year conducted additional genetic and phenotypic analyses necessary to gather more detailed evidence and to rebut the technical defenses already raised in the Polish proceedings.
The court concluded that this delay was justified and did not reflect negligent or hesitant behavior on Amycel's part. The Court of First Instance accordingly recognized the need for thorough technical assessments in the specific field of biotechnology.
Substantive issue: the patentability of mushrooms
The case also delved into the substantive matter of whether mushrooms, like the 'Heirloom' strain, could be patented under the European Patent Convention (EPC). Szymon Spyra contended that mushrooms should be considered plants and, therefore, fall under the exclusion from patentability of plant varieties under Article 53(b) EPC.
The Court of First Instance rejected this argument, clarifying that mushrooms are classified in the distinct kingdom Fungi, separate from plants. As such, they do not fall within the exclusion outlined in Article 53(b). The court emphasized that exceptions to patentability must be interpreted narrowly and noted that the European Patent Office (“EPO”) has explicitly excluded mushrooms from this exception.
Conclusion
The Court of First Instance’s decision in favor of Amycel LLC reflects the court's careful consideration of both procedural and substantive legal issues, particularly in the context of biotechnology patents. The ruling highlights the importance of thorough technical analysis in patent infringement cases and the necessity of aligning patent law interpretation with current scientific knowledge.
This case also sets a precedent for how the UPC may approach similar issues in the future, particularly regarding the urgency requirement for provisional measures and the patentability of biological organisms.
