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Patenting Peppers: Who decides what is patentable at the EPO?

Date: 8 February 2019


In 2017, the Administrative Council of the EPO changed the EPC Implementing Regulations to provide that products of essentially biological processes should not be patentable.


Now, a Technical Board of Appeal has held that the new rule is void, that the rules of the EPC can only be amended in such a way as to be consistent with the Board of Appeal’s interpretation of the articles of the EPC, and that the earlier rulings of the Enlarged Board of Appeal on the subject are the only binding law.


There is a bit of history to the patenting of plants and processes for creating plants at the EPO.


In our Spring 2013 edition of Patent issues, we reported on the Broccoli and Tomatoes cases G2/07 and G1/08, in which the Enlarged Board of Appeal ruled that a claim to a non-microbiological process for the production of plants which contains or consists of the steps of sexually crossing the whole genomes of plants and of subsequently selecting plants is in principle excluded from patentability as being “essentially biological” within the meaning of Article 53(b) EPC. A technical step to enable or assist in sexually crossing whole genomes does not escape the exclusion.


Then, in 2015, the Board of Appeal questioned if a plant could be patentable and the matter went back to the Enlarged Board of Appeal (G2/12 and G2/13) to consider the plants themselves. As we reported in Spring 2015 Patent issues, the Enlarged Board of Appeal held that a plant is only excluded from patentability under the “plant varieties” exclusion of the EPC if the clam is to a particular variety. It ruled that novel and inventive plant groupings that span different varieties were still patentable.


Thus we had the incongruous situation that a plant could be patentable (so long as it is not a specific plant variety) even though the process of producing it is not.


In November 2016, the European Commission, which is the body responsible for drafting the Biotechnology Directive 98/44/EC, issued a contrary opinion stating that it was never the intention to allow such product claims to be allowable. This prompted the EPO to suspend examination and opposition proceedings for applications relating to plants and animals obtained from essentially biological processes until the matter had been reviewed by the EPO Administrative Council.


At the conclusion of its review, the Administrative Council decided that products of essentially biological processes should not be patentable, and amended Rule 28(2) EPC to specifically exclude from patentability plants and animals exclusively obtained by essentially biological breeding processes.


Rule 28(2) EPC


Under Article 53(b), European patents shall not be granted in respect of plants or animals exclusively obtained by means of an essentially biological process.


On 5 December 2018, the Technical Board of Appeal gave its decision in case T1063/18. This case was an appeal from the EPO Examination Division against the refusal of patent application EP2753168 relating to a pepper plant. The Examination Division refused this application based on the amended wording of Rule 28(2) EPC as the product of an essentially biological process, i.e. the pepper plant, was no longer patentable. The Technical Board of Appeal took a different view and ruled that the revised wording of Rule 28(2) EPC was void and that the plant could be patented.




If the Administrative Council were of the opinion that they had effectively nullified the decision of the Enlarged Board of Appeal, then this was dealt a blow by the decision in appeal T1063/18. 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 Appeal’s 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.


This is unlikely to the end of matter and we await a response from the EPO Administrative Council on this latest development in the battle for control of which entity makes the decisions on what is and is not patentable at the EPO.


You can find this article and others in Patent Issues Newsletter Spring 2019.