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20 May 2020
This Enlarged Board is for turning – Plants and animals produced by essentially biological processes are now NOT patentable
The Enlarged Board of Appeal of the European Patent Office has issued its decision in G3/19 (Pepper), concluding that plants and animals exclusively obtained by essentially biological processes are not patentable (see the opinion here).
G3/19 follows a controversial referral by the President of the European Patent Office (EPO) to the Enlarged Board of Appeal (EBA) questioning the patentability of plants produced by essentially biological processes, following the Board of Appeal decision in T 1063/18 (Pepper).
The EBA has adopted a “dynamic” approach, admitting the referral and changing its mind on a key aspect of EPC interpretation.
Under Article 53(b) EPC, European patents shall not be granted in respect of plant or animal varieties or essentially biological processes for the production of plants or animals.
In 2015, the EBA concluded in its decisions G2/12 and G2/13 (Broccoli/Tomatoes II) that the non-patentability of essentially biological processes for the production of plants or animals under Article 53(b) EPC should be interpreted narrowly and the exclusion should not prevent claims directed to plants or plant products produced by essentially biological processes.
In light of these decisions, the European Commission reviewed the Biotech Directive (Directive 98/44/EC) and, at odds with the EBA in Broccoli/Tomatoes II, concluded that the intention of the Directive was to exclude products produced by essentially biological processes from patentability, and not just the processes themselves.
Subsequently, Rule 28(2) EPC was introduced in a 2017 decision of the Administrative Council (AC) to exclude plant or animal products produced by essentially biological processes from patentability.
In 2018, the Technical Board of Appeal in T 1063/18 (Pepper) found that the AC’s interpretation of Article 53(b) EPC by amendment of Rule 28(2) EPC was in conflict with the prior interpretation by the EBA in Broccoli/Tomatoes II. The Board held that the AC amendment of Rule 28(2) EPC was void.
In 2019, the President of the EPO referred the Pepper case to the EBA, asking questions about how to deal with the apparent conflict between the new rule and former EBA decision, and for a definitive answer to the question: are plant products produced by essentially biological processes patentable?
In its opinion, the EBA found that the referral from the President was admissible, and that the non-patentability of essentially biological processes for the production of plants or animals also extends to plant or animal products that are exclusively obtained by means of an essentially biological process.
The EBA has therefore abandoned its earlier interpretation of Article 53(b) EPC in Broccoli/Tomatoes II and has instead opted for a “dynamic interpretation” of Article 53(b) EPC. On this matter, the EPO press release explains:
“On the merits of the referral, the Enlarged Board endorsed its earlier findings on the scope of Article 53(b) EPC, which were based on the classical (i.e. the grammatical, systematic, teleological and historical) methods of interpretation. However, the Enlarged Board found that a particular interpretation which has been given to a legal provision can never be taken as carved in stone, because the meaning of the provision may change or evolve over time. This meant that decisions G 2/12 and G 2/13 did not settle the meaning of Article 53(b) EPC once and for all.
Taking account of the Administrative Council’s decision to introduce Rule 28(2) EPC, the preparatory work on this provision and the circumstances of its adoption, as well as legislative developments in the EPC contracting states, the Enlarged Board concluded that new Rule 28(2) EPC allowed and indeed called for a dynamic interpretation of Article 53(b) EPC.”
This opinion will come as a blow to the European Agritech industry. Importantly however, the opinion will not have a retroactive effect on patents filed before Rule 28(2) EPC came into effect (1 July 2017).
Life Sciences & Chemistry group
If you require further information on anything covered in this briefing, please contact Heather West; or your usual contact at the firm. This publication is a general summary of the law. It should not replace legal advice tailored to your specific circumstances.
© Withers & Rogers LLP May 2020