The European Patent Office and representatives of the 38 Member States organised a meeting last week of the Committee on Patent Law to discuss next steps following decision T 1063/18 of an EPO Board of Appeal on plant patentability. Representatives of the European Commission were present as observer.

In its landmark decision of 5 December 2018, the Board of Appeal decided that plants which are produced according to essentially biological processes need to be held patentable, despite EPO Guidelines which were introduced in 2017 to exclude them from patentability.

The discussion on the patentability of plants has a long history within the EPO. In the so-called Broccoli-II and Tomato-II cases (G 2/12 and G 2/13) of 2015, the EPO Enlarged Board of Appeal ruled that ‘plant products such as fruits, seeds and parts of plants are patentable even if they are obtained through essentially biological breeding methods involving crossing and selection.’

But in 2016, the European Commission issued a Notice, indicating that the Biotech Directive 98/44 should have been interpreted as that plants obtained by essentially biological processes are not patentable. Taking into account this notice, the EPO Administrative Council amended its Regulations in 2017, in vain however, according to decision T 1063/18, which has led to a lot of uncertainty.

According to the EPO report on last week’s meeting, the EPO Committee on Patent Law ‘addressed different potential options for the way forward and particularly particularly supported measures to obtain an opinion from the Enlarged Board of Appeal on the matter. The need for legal certainty in the interest of the users of the European patent system and the general public was strongly underlined in the debate. Discussions will continue with the intention to find a solution in the short term.’

The text of the T 1063/18 decision was published on 5 February 2019. Some relevant paragraphs can be found below.

21.

(…) any interpretation of the EPC by the EBA implies that the law should always have been read in conformity with that interpretation (…). An interpretation of the EPC by the EBA is thus to be applied to all cases pending before the departments of the European Patent Office and before the Boards of Appeal and in all subsequent cases, unless the EBA provides transitional provisions.

22.

By decision of the Administrative Council of 29 June 2017, Rule 28(2) EPC was introduced into the Implementing Regulations (see point 17, above) with a view of aligning them with the interpretation of the Biotech Directive set forth in the Notice by clarifying that “plants and animals as well as propagation materials thereof are covered by the exclusion from patentability” (CA/56/17, points 59 and 64).

23.

In the decision under appeal, the examining division reasoned that Rule 28(2) EPC constitues a “clarification of the scope of Article 53(b) EPC”. 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.

24.

(…) in the present case, Rule 28(2) EPC in fact reverses the meaning of Article 53(b) EPC, as interpreted by the EBA. In view of this direct contradiction, interpreting Rule 28(2) EPC in such a way that no contradiction exists is not possible.

25.

The board therefore concurs with the appellant’s view, (…), that Rule 28(2) EPC is in conflict with Article 53(b) EPC as interpreted by the EBA.

29.

The interpretation of the Biotech Directive as put forward in the Notice cannot be seen as a relevant development because it has not been confirmed in a legally binding way. Within the legal framework of the European Union (EU), a binding interpretation of provisions of EU law such as the Biotech Directive are decided in last instance by the CJEU (Article 267(b) Treaty on the Functioning of the European Union). This was recognised in the Notice itself (…). The Notice therefore has no legal authority.

34.

(…) the Administrative Council is not (…) competent to amend the Convention, here Article 53(b) EPC, by amendment of the Implementing Regulations, here Rule 28(2) EPC.

43.

The view that Rule 28(2) EPC served to ensure consistency between the Biotech Directive and the EPC and with that legal certainty, is based on the presumption that the Biotech Directive has to be interpreted as set out in the Notice. As explained under point 29 above, such a presumption is not valid unless the CJEU has decided on the matter, which it has not. In fact, adopting the interpretation of the Notice in the absence of a decision of the CJEU on the matter, creates a risk of misaligning the provisions of the EPC with the Biotech Directive, should the CJEU later concur with the analysis of the EBA.

46.

Having established that Rule 28(2) EPC is in conflict with Article 53(b) EPC as interpreted by the EBA and in view of Article 164(2) EPC, it must be concluded that the provisions of the Convention prevail.

47.

Thus, the decision under appeal, holding the subject matter of claims 1 and 2 to be within the exception to patentability of Article 53(b) EPC and Rule 28(2) EPC, is to be set aside. The appeal is found to be allowable.


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4 comments

  1. A referral to the EBA appears to be rather useless, because the EBA has already spoken. Unless it is hoped that the EBA has changed its mind. But why would that be?

    Ah, I forgot, there is a new chairman of the EBA (who also has full discretion to propose reappointment of board members … or not to do so). He might prove persuasive.

    In a not so distant past, it was said: If you do not like the judgement, change the law. Now it has become: If you do not like the judgement and you do not want to change the law, ask the judge whether he really meant what he said (preferably after having given him a guided tour of the torture room).

    We live in interesting times …

  2. So let me see if I can work out what has happened here.

    The judiciary of the EPC (the Enlarged Board of Appeal) interprets a 45 year old provision of the EPC. That interpretation proves to be unpopular with the current executive (the Commission) and legislature (the European Parliament) of a body that, 20 years ago, wrote a similar provision into a different law (the Biotech Directive). It also proves unpopular with (special interest groups within) certain states that are common to the EPC and the EU. As a result, the executive and the legislature of the EPC decide to take action.

    Now, what can be done when the judiciary has done their job in a way that jars with current sensibilities of the executive and legislature? As Michel stated, the “traditional” approach would be to simply change the law. This upholds the separation of powers, as the judiciary’s independence is not threatened but the legislature and the executive still get to exert their will.

    However, it seems that this “traditional” approach is not good enough for the AC. This is because, due to a pesky principle called the protection of legitimate expectations, amended laws can hardly ever be applied retroactively to existing cases. For this reason, the executive and legislature of the EPO have (by introducing Rule 28(2) EPC) effectively tried to strong-arm the EPO’s judiciary into retroactively changing their interpretation of the EPC.

    The AC’s approach was always a blatant attempt to subvert the rule of law, by overriding the judiciary’s interpretation. The judiciary has now stated the obvious by pointing out that the AC does not have the authority to do this. So how does the Patent Law Committee respond? Does it accept that the AC’s actions were unlawful and recommend that they are reversed? Not a bit of it! It doubles down and states that it intends to find another way to achieve a plainly unlawful outcome that rides roughshod over the legitimate expectations of patentees and applicants.

    Executives and legislatures that were more humble might have accepted that it is not always possible for a decades-old law to be interpreted in a manner that reflects current opinions. They might also have accepted that the users of the patent systems have legitimate expectations that should be protected. However, it seems that we live in times when the rule of law is simply cast aside if it conflicts with outcomes sought by ruling executives and legislatures. This is not only breathtakingly arrogant but also extremely short-sighted. If the current attempt to subvert the rule of law succeeds, then it will establish a precedent that, in future, could be wielded in ways causing untold damage to the patent system in Europe. More worryingly, it would immediately put the EPC in peril of falling foul of EU and/or constitutional laws. That could in turn bring and end to the EPC… and all those well-paid positions in the EPO’s executive.

    1. Actually, is this so new? I thought this arose from EPC2000 which gave the AC more leeway to amend Rules, which does not require an inter-governmental conference, while diverting law from the EPC Articles. In turn, the AC agreed to have a 5-yearly I-g conference, but of course this has proved illusory when the leadership simply ignored it (have you ever heard any IP minister showing any knowledge of this requirement, let alone wanting to act on it?). The EBoA has merely pointed out the fallacy of such a procedure of subverting the Articles in favour of malleable rules.

      1. Yes, it is new.

        Amending the rules in accordance with the EPC is one thing. However, amending the rules in contravention of the Articles of the EPC is something completely different (and blatantly unlawful).

        The AC were (repeatedly) informed that what they were seeking to achieve was unlawful. They pressed ahead anyway… which brings us to the recent, inevitable decision of the Board of Appeal.

        It is now crystal-clear that there is zero respect within the EPO’s executive and legislature for the decisions of the Boards of Appeal in connection with Article 53(b) EPC. All fine and well, but it is essential for the continued functioning of the EPO that the principle of separation of powers (and the principle of protection of legitmate expectations) is respected. This is why the EPO’s recent actions (and responses) are so alarming.

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