11 February 2019

Update on the Patenting of Plants

The issue of patentability of plants produced by essentially biological processes has been at issue since the original tomato and broccoli cases before the EPO’s Enlarged Board of Appeal issued in December 2010. The EPO attempted to put the matter to rest in 2017 by introducing a new rule (Rule 28(2) EPC) which expressly excluded such subject matter from patentability.

In the most recent twist to the story, in a Written Decision published on 5 February 2019, an EPO Technical Board of Appeal has now confirmed that plants produced by essentially biological processes are indeed patentable (T 1063/18).  This may on the face of it seem surprising given the introduction of Rule 28(2) EPC in July 2017. However, for those working in this space, or following the developments in EPO Board of Appeal case law over the last three years or so, this is perhaps not so surprising.  Numerous commentators have questioned the validity of new Rule 28(2) EPC, and arguments have been made that this could leave the member states of the EPC open to financial liability for adopting the rule.

The Enlarged Board of Appeal of the EPO settles questions of law to allow for uniform application of the EPC.  In G2/12 and G2/13 the Enlarged Board held that Article 53(b) EPC does not exclude plants and plant material produced by essentially biological processes as unpatentable.  It is also explicitly set out in the EPC that the Articles of the EPC take precedence over the Rules in case of any conflict.

The Board of Appeal in T 1063/18 found new Rule 28(c) EPC to reverse the meaning of Article 53(b) EPC, and hence to be in direct contradiction with the Article as interpreted by the Enlarged Board of Appeal, such that no conciliatory interpretation of the rule is possible.  Therefore, when faced with determining whether the pepper plants of T 1063/18 were patentable, the Board of Appeal followed the interpretation of Article 53(b) EPC provided by the Enlarged Board, allowing the patentability of such subject matter, rather than the recently introduced rule excluding it.

Some might question whether the case should have been referred up to the Enlarged Board, which would have allowed confirmation of the Enlarged Board’s interpretation of Article 53(b) EPC.  However, as noted by the Board of Appeal at the Hearing, the Enlarged Board’s reasoning and subsequent decision in G2/12 and G2/13 was unambiguous.  As the Board in T 1063/18 was not minded to diverge from the Enlarged Board’s approach, it was satisfied that no new referral was needed.

Furthermore, the Board in T 1063/18 calls into question the introduction of new Rule 28(2) EPC on the basis of an earlier Notice issued by the European Commission on the interpretation of the Biotech Directive, which the Board states has “no legal authority”.  Instead, the Board reasons that only the CJEU can provide a biding interpretation of the Biotech Directive.

Thus, as it stands, new Rule 28(2) EPC has been found to be in conflict with Article 53(b) EPC.  One would expect that other cases on this point before the Boards of Appeal would be decided in the same way.  However, there is a question as to whether EPO Examiners will be under pressure to follow Rule 28(2) EPC, given that the EPO made a policy decision to introduce this rule for consistency with the European Commission’s Notice issued in November 2016.

The EPO has yet to react to the Board’s decision in T 1063/18.  If it wishes to amend Article 53(b) EPC to exclude products of essentially biological processes from protection, this can only be achieved by an intergovernmental conference of the member states to the EPC.  There has been much political lobbying in favour of excluding this subject matter from patentability, and so it might be expected that this will be high on the EPO’s agenda.  On the other hand, this is proving a highly contentious issue, which can only truly be resolved by a decision from the CJEU providing a definitive interpretation of the Biotech Directive.  Therefore, the EPO may choose to defer further amendments of the EPC until such a time as an interpretation has been provided by the CJEU.  There is though no telling when a suitable case would be brought to the CJEU for such a decision to be made.

If you have any questions about this article, please contact Anna Gregson.