UPC Hague Local Division clarifies that mushrooms are not plants

On 31 July, in case UPC_CFI_195/2024, the Unified Patent Court (UPC) in The Hague settled a legal dispute that raises some questions about the patentability of mushrooms.

The case involved Amycel LLC, which holds European patent EP1993350 for a mushroom strain, “Heirloom”, which is the best selling form of brown mushrooms in the world. In 2017, the company discovered that a Polish farmer was producing a similar strain called ‘Cayene’. Amycel decided to file a lawsuit in Poland in July 2023. In May 2024, it then filed an action with the UPC as it had identified potentially infringing activities in the Netherlands, Germany, France and Italy, seeking an injunction to stop the commercialisation of “Cayene” in these countries.

The Polish farmer raised two defences, both of which were dismissed by the UPC. Firstly, it claimed that Amycel had started proceedings for an injunction after an “unreasonable delay” following its becoming aware of the potential infringement. This was rejected by the Court because the one-year delay was due to Amycel’s unsuccessful attempt at finding a negotiated solution to the dispute and to its subsequent preparation for the legal dispute (namely, making sure that it had a solid legal ground on which it could bring the action). 

In addition, the Polish farmer in turn sought revocation of the "Heirloom" patent on the grounds that the patent lacked novelty and that in any event mushrooms should be considered plants and therefore excluded from patentability under Article 53(b) of the European Patent Convention, which prohibits the patenting of plant and animal varieties. However, the Court rejected this argument because mushrooms are Fungi, which are distinct from plants, and are not covered by the exclusion from patentability in Article 53(b) of the Convention. The court also cited case law, such as the Tomato II case (G2/12), which states that the exclusion applies to plants and animals, not to derived products such as meat or feed, or even to other products such as mushrooms. Therefore, the court in The Hague concluded that the 'Heirloom' patent was not subject to any exceptions to patentability, upheld its validity and considered that the 'Cayene' variety infringed this patent. As a result, the requested injunction was granted to protect Amycel's rights.