The much awaited decision T 1063/18 by Technical Board of Appeal 3.3.04 in a five-member composition has been published today. The patent application under appeal related to new pepper plants and fruits with improved nutritional value, and the decision did indeed turn out to be quite peppery, at least in regard to the EPO Administrative Council’s attempt to prohibit the patenting of plants by way of the addition of the “interpretative” Rule 28(2) EPC.

To begin with, the Board reminded itself of the existing case law of the Enlarged Board of Appeal (EBA) on Art. 53(b) EPC, which stipulates that European Patents are not to be granted for plant or animal varieties or essentially biological processes for the production of plants or animals. The question then put before the EBA was whether this exclusion also extends to plants or plant material or part of plants other than a plant variety. TBA 3.3.04 summarized the EBA’s case law as follows:

Thus, in decisions G 2/12 and G 2/13, the EBA concluded 
that the scope of application of the term “essentially
biological processes for the production of plants” in 
Article 53(b) EPC is interpreted to the effect that 
product inventions where the claimed subject-matter is 
directed to plants or plant material such as a fruit or 
plant parts other than a plant variety, as such, are 
not excluded from being patented (see Reasons, 
point IX.(1)).

These two decisions by the Enlarged Board have always been controversial, and it is probably fair to say that both the majority of the EU Parliament and the EU Commission did not like them too much. A Notice issued by the EU Commission on the patent protection of plants was quoted by the Board as stating the following:

“While these decisions of March 2015 [G 2/12 and G 2/13 of 
the EBA] are in line with the intentions of the drafters of the EPC, it
is questionable whether the same result would have been reached in the EU context” and furthermore that “When trying to assess the intentions of the EU legislator when adopting the Directive, the relevant preparatory work to be taken into consideration is not the work
which preceded the signature of the EPC in 1973, but that which relates to the adoption of the Directive.”

and

“The Commission takes the view that the EU legislator’s intention when adopting Directive 98/44/EC, was to exclude from patentability products (plants/animals and plant/animal parts) that
are obtained by means of essentially biological processes.”

Thus, there was a divergence between EPC law and the intentions of the EU legislator issuing the Biotech Directive, according to the Commission.

The EPO’s Administrative Council tried to bridge this divergence by adding a new paragraph 2 to Rule 28, reading:

“(2) 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.”

This addition was viewed by the Examining Division as a “clarification of the scope of Art. 53(b) EPC”. But the Board of Appeal vehemently disagreed with this interpretation:

The board however cannot deduce from decisions G 2/12 and 
G 2/13 any other interpretation of Article 53(b) EPC 
than that plants are not excluded from patentability, 
even if they can only be obtained by an essentially 
biological process. Since Rule 28(2) EPC excludes 
plants or animals exclusively obtained by means of an 
essentially biological process from patentability, its 
meaning is in conflict with the meaning of 
Article 53(b) EPC as interpreted by the EBA.

While the Board conceded that there are cases where possible contradictions between a rule of the implementing regulations and a provision of the EPC can be resolved by interpretation, it saw no way to do this here in view of the crystal clear case law of the Enlarged Board. The Board of Appeal was of the view that in the present case, Rule 28(2) EPC in fact reverses the meaning of Article 53(b) EPC as interpreted by the EBA. It also saw no reason to deviate from G 2/12 and G 2/13 and concluded that it must 
apply decisions G 2/12 and G 2/13 unless it has reasons to refer the same question underlying these decisions for reconsideration by the EBA.

Such a reason might have been a later subsequent agreement between the parties in the sense of the Vienna Convention. However, in the Board’s pretty outspoken view, the AC’s addition of Rule 28(2) EPC was no such subsequent agreement. It would in fact represent an amendment of an Article of the Convention, for which the Administrative Council simply is not empowered in the light of Articles 33(1)(b) and 35(3) EPC.

Thus, to put it briefly and in my words, the Administrative Council acted ultra vires in adding Rule 28(2) EPC. For what it’s worth, I have to confess that this is exactly the suspicion that I had from the first day when I saw the Administrative Council’s decision introducing this rule. The proper way to implement such a substantive change of the European Patent Convention would have been by way of a diplomatic conference.

It will be interesting to see whether this laborious project will now be initiated. If so, there is certainly more on at least my personal wish list for legislative amendments, in particular the wish for a strong and truly independent judiciary within the European Patent Organisation that satisfies constitutional standards in regard to a proper separation of powers and, inter alia, protects members of the EPO from executive overreach.

Nonetheless, decision T 1063/18 shows that the Technical Boards of Appeal and the Enlarged Board are at least able to reach independent decisions when it comes to provisions of the EPC, even if these decisions will not always be popular or uncontroversial. In the end, though, the judiciary is bound to the law, and in this case Article 164(2) EPC clearly stipulates that the provisions of the Convention prevail.


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9 comments

  1. Certainly a clear decision based upon robust logic … which is more than can be said for the decision-making process that culminated in amended Rule 28(2) EPC.

    So what next? Will another (yet again ultra vires) general stay of prosecution be imposed, and the effects of T1063/18 confined solely to the case in which it was issued? Given the highly politicised nature of previous actions, nothing would surprise me now… except perhaps for common sense to prevail and for the Implementing Regulations to be reverted to their pre-1 July 2017 form (given that they have been determined to be incompatible with the Articles of the EPC).

    By the way, unless and until the CJEU provides a ruling on the interpretation of Article 4(1)(b) of the Biotech Directive, I do not see amendment of Article 53b EPC as being a viable way forward. This is because there is a decision of a (Dutch) national court that is in line with G2/12 and G2/13. As a consequence, it is FAR from certain that current Rule 28(2) represents the correct interpretation of Article 4(1)(b) of the Biotech Directive. Also, any “final instance” national court faced with the task of interpreting Article 4(1)(b) is now OBLIGED under EU law to refer questions to the CJEU before reaching any interpretation other than that outlined in the Dutch decision.

    Given that it is impossible to be certain how the CJEU will interpret Article 4(1)(b), it would be somewhat premature for the EPC Member States to prejudge that outcome by amending Article 53b EPC now. Moreover, it is perfectly possible that the CJEU will interpret Article 4(1)(b) in precisely the same manner as the Dutch court (and the Enlarged Board of Appeal)… meaning that any changes to Article 53b could result in the EPC being clearly out of line with EU law.

    In the light of the above, my view is that it would be MUCH more sensible for the EPO to continue interpreting Article 53b EPC in accordance with G2/12 and G2/13, and to only change course if and when the CJEU affords a different interpretation to Article 4(1)(b) of the Biotech Directive. However, I won’t hold my breath waiting for the AC to suddenly start seeing sense!

  2. Whist I may not see amendment of Article 53b EPC being a sensible move at this stage, I do agree that it is high time for a (long-overdue) Diplomatic Conference to be convened in order to explore options for amending the EPC.

    May I suggest that, as a first order of business at any Diplomatic Conference, the Member States take action to ensure that the EPO accedes to the European Convention on Human Rights? There is no reason why this should not be possible. Firstly, the amendments to the ECHR that were proposed to enable the accession of the EU demonstrate that being an international organisation (as opposed to a State) need not prevent accession. Secondly, ALL of the EPC Contracting and Extension States are also Member States of the Council of Europe (and so have already acceded to the ECHR in their own right).

    In this context, a document providing answers to questions regarding the proposed accession of the EU makes very interesting reading (https://www.echr.coe.int/Documents/UE_FAQ_ENG.pdf). The following points particularly caught my eye.

    – Accession will CLOSE GAPS IN LEGAL PROTECTION by giving European citizens the SAME PROTECTION VIS-À-VIS ACTS OF THE UNION as they presently enjoy vis-à-vis all member States of the Union.

    – Accession will result in ALL EUROPEAN LEGAL SYSTEMS BEING SUBJECT TO THE SAME SUPERVISION in relation to the protection of human rights. Given the increasingly broad competences of the EU, it is ever more difficult to accept that it should be the only “legal space” left in Europe which is not subject in the same way as State parties to the Convention to external scrutiny by the European Court of Human Rights.

    – Accession will REASSURE CITIZENS that the EU, just like its member States, is not ‘above the law’ as far as human rights are concerned. This is a QUESTION OF CREDIBILITY, given that EU member States have transferred important competences to the Union and that ratification of the ECHR is a condition for EU membership.

    Who could possibly argue that the same points do not apply equally to the EPO?

  3. Concerned, when I read your second post, with its idea that the EPO should accede to the European Convention on Human Rights, I immediately thought of the human rights of certain individual EPO employees, and how they have been arrogantly abused, with total impunity and in such dirigiste style, by the immediate past-President.

    But let’s not hold our breath. Can anybody imagine the AC finding the human decency to take such a step, especially in times like these, when it seems to all the world as if very few national governments any longer give a Flying Fl_lck for the precious Rule of Law.

    1. Max, I agree that an alarmingly high percentage of AC Members put in place by elected governments of our Member States to SERVE THE PUBLIC appear to display a complete lack of concern when it comes to the rule of law. Nevertheless, it would still be reasonable for users of the European patent system (for example, via bodies such as the epi) to put forward to a proposal for the EPO to accede to the ECHR.

      Especially given the above-quoted answers to FAQs relating to the proposed accession of the EU, it is difficult to see why anyone would object to the proposal. It is not as if the EPO would face any impossible administrative burden by acceding, as they would only need to ensure compliance with ONE legal system governing human rights (that is, the provisions of the ECHR).

      Given that the outcome of SUEPO’s complaint to the Dutch courts (and to the ECtHR) provides a practical illustration of the legal “loophole” that prevents EPO staff from defending their human rights, there is a clear need to take action. Unless, that is, EPO management and the AC want to go on the record as saying that they do not give a fig about affording EPO staff the same (or even a remotely equivalent) access to justice as is mandated under EU-wide (and Council of Europe-wide) laws. And if that were their response, those of us who would see that as an outrage could just keep asking the question: “What is the purpose of denying EPO staff their human rights?”. I really do not think that there could ever be an acceptable answer to that question.

      I have sometimes heard it said that EPO staff are overpaid and over-privileged. I am not in a position to judge whether or not that is fair comment. However, even if one were to take that view, it is still completely irrational to try to “remedy” the situation by taking fundamental RIGHTS away from EPO staff (as opposed to their privileges). But perhaps this just brings me back to the questionable track record of the AC and EPO management when it comes to decision-making…

  4. It is remarkable to see how the BA defend their independence when it comes to the interpretation of the EPC, but they still have no independence when it comes to their budget and the possible conflict between the status of member of the BA and the general staff regulations at the EPO. I hope that the GFCC will look into this matter, not only when dealing with the complaint about the UPC, but when looking at the complaints against the independence of the BA which are much older. The constant fiddling with staff regulations so as to exclude a member of the BA from reoccupying his post tells a lot. The BA need thus not only their independence as far as the budget is concerned, but also as far as disciplinary sanctions are at stake. Can a judge whose re-appointment is subject to an assessment of performance, for which no criteria are public, be called independent? I fear not.

    For UPC judges, there are also no criteria known to decide on their re-appointment.

    As far as the independence of the UPC judges is concerned, I invite you to look at Art 10 of the Statute of the Court. According to this article, a judge can be removed from office by a decision of the Praesidium of the UPC, but I could not find any means of redress for a judge having been removed from Office under this article. Under independence of judges, I understand something different.

    I cannot see the bunch of people sitting in the AC doing anything in order for the EPO to accede to the ECHR. The latter might decide that the ILO-AT is not a jurisdiction that can qualify as a proper means of redress for EPO staff as it only looks whether the existing rules have been correctly applied, but will never say anything whether those rules are fair and give staff the required protection.

    Before calling a diplomatic conference, to look among other things at the second basket of measures, left aside in 2000, it is high time to call a conference of ministers in accordance with Art 4a EPC. As EPC 2000 went into force in 2007, two conferences are due since, but they never took place as it was the tail wagging the dog.

    This would also be a way for the new president to distance himself from his predecessor. Will he have the courage to do? I am not too sure seeing that in the last half year barely anything has changed at the EPO.

    Techrights: FINGERS OFF!!!!!

    1. Attentive, you may be right that the AC will be disinclined to act. But that does not mean that there is no point to (polite yet firm) pressure from users of the system for the EPO to accede to the ECHR.

      Remember, the ECHR also enshrines a right to property, which – according to case law of the ECtHR – includes (applications for) intellectual property. This means that the EPO’s accession to the ECHR could have a side-benefit for patent applicants and proprietors. This is because a principle enshrined in the ECHR (that “No one shall be arbitrarily deprived of his property”) could form an additional safeguard against any decision of a final instance of the EPO that is not soundly based upon the evidence on file. It could also safeguard against the retroactive imposition of different standards of patentability in situations where the applicant or proprietor had a legitimate expectation that his case would be treated in accordance with the standards in place at the time of filing. (This could well have become a “live” issue for the purported retroactive application of Rule 28(2) EPC to applications filed before 1 July 2017, for which the EPO’s prior case law, including G2/12 and G2/13, firmly established a legitimate expectation that the AC should have sought to protect.)

      Would accession to the ECHR require changes at EPO? Of course. But that is no excuse for inaction. It is perfectly reasonable for the users of the system to demand that they, and EPO staff, are afforded the same (human) rights as they would be under all national laws. If some adaptations are required, even if they are substantial and/or inconvenient, then so what? Where there is a will then there is a way. Let us remember that, at great cost and at substantial inconvenience to users, the Boards of Appeal were relocated just in order to improve the PERCEPTION of their independence (though I have my doubts whether the relocation actually achieved even that very modest objective). By way of contrast, ensuring that applicants and EPO staff are not deprived of their fundamental human rights would appear to be a much more justifiable reason to make expensive and/or inconvenient changes.

  5. @Concerned

    If the court, or the BoA, decides that there is no property, i.e. the patent is invalid, you are not being deprived of your property.

    1. @LightBlue.

      Well, that rather depends if there has been a fair “trial”, does it not? If juducial norms have been trampled over to reach a logically insupportable conclusion, then I would think that there might be a colourable case under the ECHR.

  6. Dear Concerned Observer,

    I cannot but agree that the EPO should join the ECHR. Why should EPO staff be excluded from this form of protection just because they accepted a job there? They remain European citizens and should not be left to indulge the whims and resentments of the head of an international organisation. For some who will remain unnamed, immunity is equivalent to impunity. This cannot be. By the look of what is going on at the EPO, there is even a bare necessity for a protection as the ILO-AT has shown the strict limits of its intervention.

    On the other hand, knowing the mind-set of the members of the AC, I doubt they will act in this direction. They might only act if there is a proposal of the President, but I cannot see any of them, past or present, accepting to do so, as it would mean that impunity had limits, not for them, but for the organisation. The members of the AC do consider EPO staff as a bunch of privileged people, and for the alleged privileges they get, they can certainly suffer a bit. They do forget that as far as social security, pensions etc. are concerned, they have left the national systems of their country of origin. This is a price and a risk, I could not presently advise young people at the beginning of their career to take. Certainly not at the EPO, whose working conditions have seriously degraded under the “leadership” of the would-be Napoleon of the 10th floor.

    As far as property is concerned, and this also goes for LightBlue, I would remind you about a discussion in August 2018 in the present blog about “International Investment Arbitration, the European Patent Office, and the Future Unified Patent Court”. Here is the link:

    http://patentblog.kluweriplaw.com/2018/08/01/international-investment-arbitration-extraordinary-remedy-concerning-decisions-european-patent-office-future-unified-patent-court/

    This possibility is still lurking in the background, independently of what the ECHR could about property as you described. I do not say it makes things simpler, but such a Damocles sword cannot be ignored. Not that I am in favour of private arbitration chambers, the contrary is true, when you read my comments at the time. I rather see ordinary justice playing its role.

    It is a pity that the EPO had to be run down like it has been. It has been a model organisation for many years, but has been degraded to a playground for would be managers, ruining not only its reputation, but also the motivation of its staff.

    Techrights: FINGERS OFF!!!

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