Date: 15 May 2020
The Enlarged Board of Appeal has issued its opinion in the case of G3/19 and found that plants and animal products produced by essentially biological processes are not patentable in light of the exclusions set out in Article 53(c) EPC. This is perhaps the conclusion of a long running saga relating to what is and is not patentable regarding plants and animals derived from essentially biological processes.
This is an update to our previous story on this topic: Patenting Peppers: Who decides what is patentable at the EPO?
The G3/19 opinion relates to a referral from the President of the EPO in light of the decision from the Technical Board of Appeal in the case of T 1063/18.
The T 1063/18 case was an appeal against the decision of the Examination Division to refuse a patent application for a pepper plant. The refusal was based on the wording of Rule 28(2) EPC which was amended in 2017 to state that the product of an essentially biological process, i.e. the pepper plant, were not patentable:
"the exclusion of essentially biological processes for the production of plants in Article 53(b) EPC does not have a negative effect on the allowability of a product claim directed to plants or plant material such as plant parts."
The amendment of Rule 28(2) EPC to specifically exclude products from essentially biological processes was made by the Administrative Council of the EPO but this amendment is contrary to and entirely in conflict with the prior decision of the Enlarged Board of Appeal in the cases of G2/12 and G3/12 in which it was found that products of essentially biological processes were patentable.
In T 1063/18, the Technical Board of Appeal came to the conclusion that Article 164(2) EPC states that the articles of the European Patent Convention take precedence over the rules, and that the Enlarged Board of Appeals interpretation of Article 53(b) EPC in G2/12 and G3/12 must be taken to be the primary guidance on what is or is not patentable. Therefore, the board held that Rule 28(2) EPC, as amended, cannot be compliant with the interpretation of Article 53(b) EPC and must be void and unenforceable.
Clearly, a situation in which the rules of the EPC take a completely opposing position to that of the Board of Appeal could not be allowed to continue and the President of the EPO referred the matter back to the Enlarged Board of Appeal.
Surprisingly, the Enlarged Board of Appeal has gone against its earlier decision in cases G2/12 and G3/12 and now support the new wording of amended Rule 28(2) EPC. In the press release from the EPO regarding the G3/19 opinion it states:
"In its opinion issued today, the Enlarged Board of Appeal held the referral by the President of the European Patent Office to be admissible within the terms of a re‑phrased question. 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.
In adopting this dynamic interpretation, the Enlarged Board abandoned its earlier interpretation of Article 53(b) EPC in decisions G 2/12 and G 2/13. It held that, after the introduction of new Rule 28(2) EPC, Article 53(b) EPC was to be interpreted to exclude from patentability plants, plant material or animals, if the claimed product is exclusively obtained by means of an essentially biological process or if the claimed process features define an essentially biological process.
In order to ensure legal certainty and to protect the legitimate interests of patent proprietors and applicants, the Enlarged Board ruled that the new interpretation of Article 53(b) EPC given in G 3/19 had no retroactive effect on European patents containing such claims which were granted before 1 July 2017, or on pending European patent applications seeking protection for such claims which were filed before that date."
This reversal in the opinion of the Enlarged Board or Appeal has surprised many and will be disappointing news to the agricultural technology industry but may at last provide clarity regarding what falls within the Article 53(b) EPC exclusions.
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