Amycel scores a win as UPC decides on patentability of fungi

The local division The Hague has granted a PI against a Polish mushroom producer in a dispute over a patent protecting a mushroom strain.

US-based company Amycel develops mushroom strains and provides mushroom spawn, supplements, and services to mushroom growers. Its EP 1 993 350 protects brown mushrooms for commercial production. The object of the invention is to provide brown varieties of Agaricus bisporus mushrooms with improved commercial characteristics. These include increased productivity, darker and thicker cap and non-compatibility with existing strains to form a genetic disease barrier.

The producer companies Limgroup from the Netherlands and Somycel from France filed oppositions against the patent, but these failed. In 2019, the Opposition Division maintained EP 350 in amended form. No appeal is pending at the EPO.

Interpreting at own cost

Amycel has accused the Polish mushroom producer Szymon Spyra of infringing its patent with the latter’s brown mushroom strain sold by his company Spyra under the name “Cayene”. The US company applied to the local division The Hague for provisional measures valid in the Netherlands, Germany, France and Italy. The court has now granted this application (case ID: ACT_23163/2024_CFI_195/2024).

In their ruling, the judges stated, “The court is convinced with a sufficient degree of certainty (R. 211.2 RoP) that the Applicant’s right is infringed by the offer and distribution of the contested embodiments within the Contracting Member State of The Netherlands (Art. 25(a) UPCA).”

The panel around presiding judge Edger Brinkman included Rute Lopes and Margot Kokke, as well as technically qualified judge Steen Wadskov-Hansen. The proceedings took place in English.

It is currently not known whether Spyra will appeal the ruling.

On the evening before the hearing in The Hague, Spyra submitted an invalidity action against Amycel’s patent at the Milan central division (PR_ACT_40493/2024, UPC_CFI_403/2024).

The defendant had previously requested that the UPC provide simultaneous interpreting into Polish during the hearing. Amycel argued that this would increase the costs of the proceedings. In a procedural order from 25 June, judge rapporteur Margot Kokke denied Spyra’s request. However, she allowed the defendant to engage an interpreter at its own expense (case ID: ACT_23163/2024).

Fungi not part of plant kingdom

Szymon Spyra argued that the patent’s claim contravenes Art. 53(b) EPC, which pertains to the exclusion of “plant or animal varieties” from patentability. The defendant reasoned that a mushroom strain should be equated to a plant variety and, therefore, extend to subject matter that is excluded from patentability.

However, the court pointed out that the exclusion concerns plant and animal varieties only and therefore does not encompass other organisms, such as mushrooms. The latter belong to the fungi kingdom that is taxonomically distinct from the plant and animal kingdoms.

Furthermore, the court found Amycel’s argument on infringement convincing and granted the PI.

Economically significant

According to the Polish Ministry of Economic Development and Technology, the European mushroom market is worth €1.5 billion anually. A recent report by the ministry showed Poland produced 350,000 tonnes of mushrooms in 2022. This makes the country the largest producer in Europe, followed by the Netherlands with 230,000 tonnes.

The economic significance of the patent is therefore high. Amycel sells the mushroom strain BR06. Claim 1 of its EP 350 refers to this as “Heirloom”. Heirloom is the best-selling brown mushroom strain in the world.

Alliance in action

The Dutch IP boutique Brinkhof represented Amycel. The law firm had already worked for the client in previous national litigation against other defendants. Lead counsel Rik Lambers pleaded the case at the UPC, assisted by partner Daan de Lange and lawyer Jasmiin de Groot. Patent attorneys Tilman Künzl and Philipp Marchand from the Basel office of Vossius, with which the Dutch law firm cooperates in the Vossius & Brinkhof UPC litigators alliance, advised on technical issues.

Michal Przyluski of Warsaw based patent attorney firm JD&P represented Polish mushroom producer Szymon Spyra. The Polish patent attorney has a background in computer sciences, but also studied biotechnology. He is a representative before the UPC, despite Poland not being part of the UPC. In addition to his extensive patent drafting and prosecution practice, he is also regularly active in EPO oppositions. Furthermore, he also has experience in Polish infringement proceedings.

All images of judges: ©Unified Patent Court