The decision of the Administrative Council of the EPO to refer to the Enlarged Board of Appeal (EBA) decision T 1063/18 on the patentability of plants obtained by essentially biological processes has been criticized from various sides.

A week ago, during the 159th meeting of the EPO Administrative Council, president António Campinos said his referral of the case to the Enlarged Board of Appeal was ‘justified and necessary’ and, according to a press release, he received ‘broad and overwhelming support’ for this. Campinos announced that he would ‘proceed swiftly to submit the referral (…) to restore legal certainty fully and speedily in the interest of the users of the European patent system and the general public.’

The aim of the referral, according to the press release, was ‘to obtain an opinion (…) on the patentability of plants exclusively obtained by essentially biological processes, hereby considering recent legal developments (interpretations and statements of the European Commission, the EU Council, European Parliament and EPO’s Administrative Council on the interpretation of the European Patent Convention and the EU Bio-Directive, all of them concluding that there should be no patentability in these cases).’

In case T1063/18, an EPO Board of Appeal decided plants can be patented after all, despite attempts of the European Commission and the EPO Administrative Council to ensure they would nót be patentable. (full background of the case here and here).

Commentators of this blog however, were quick to question the legality of the referral. As Mouna pointed out: ‘I wonder on which legal basis this referral is made, considering that there are no conflicting decisions. Article 112(1)(b) [EPC]: the President of the European Patent Office may refer a point of law to the Enlarged Board of Appeal where two Boards of Appeal have given different decisions on that question.’

Attentive observer wrote: ‘ (…) Where is the claimed legal uncertainty? In T 1063/18, the BA has considered that the amendment of R 28, which was carried out in the wake of an opinion of the EU Commission, not even a decision of the CJEU, was against the interpretation of the EPC by the EBA in decisions G 2/12 and G 3/12. A referral would only be legitimate if a different BA, or even the same BA, but in a different composition, would arrive at the opposite conclusion of T 1063/18. The possibility for the President of the EPO to refer questions to the EBA should not be misused for political reasons.

(…) The first question to ask is whether such a referral is at all admissible. (…) The envisaged referral actually requires the Enlarged Board to disregard its own case law. (…) I hope that the EBA will resist this attempt to influence it, as it resisted the attempts of the predecessor of the present president in G2301/15 and G 2302/15. (…)’

And AM revealed: ‘My wife, who happens to work at that venerable Office, was quite surprised by the wording of the internal communiqué, which reads:

“… Concerning legal matters, most of the debates were dedicated to decision T 1063/18 …, which created much legal uncertainty as it disregarded the clear interpretation provided by different authorities, namely the EPO Member States and the EU institutions. This is why a full support was expressed in favour of the proposal of the Office to refer this decision to the EBA. …”

It is quite surprising to see the executive branch of an institution telling its judiciary that it should have decided differently. The authoritative tone of the statement is rather unpleasant. It seems the separation of powers is not part of the DNA of this organization.’

Epo stakeholder was the only one to show comprehension: ‘I understand the critical comments regarding the legality of a referral by the President of the EPO in this case and the concern about independence of the Boards of Appeal. However, independence should not be a synonym for autism. The Boards of Appeal should not ignore other legal components of the overall context such as the existence of statutory protection for plant varieties and the EU biotech directive.and take them into account as much as the case law of national courts.’ (more comments below this post).

In a blogpost by Rose Hughes of IP Kat, she concludes it is likely that the EBA will not admit the referral: ‘It is also noted that the EBA has form in finding referrals by the President as inadmissible in the absence of conflicting decisions from the Boards of Appeal (e.g. G 3/95). The case law therefore suggests that any referral by the President, citing legal developments such as statements from the European Commission, is unlikely to be accepted by the EBA. In fact, it seems highly probable that the EBA will consider the issue to have already been fully decided in G 2/12 (Broccoli/Tomato II).’

CIPA position paper

In the meantime, on 25 March 2019, the Chartered Institute of Patent Attorneys (CIPA) in the UK published a position paper on the patenting of plants; or as CIPA writes: ‘on the lawfulness of a number of options for addressing the conflict between decisions of the EPO Boards of Appeal (i.e. G2/12, G2/13 and T1063/18) and Rule 28(2) EPC.’

Remarkably, CIPA rejects all options for resolving the conflict which were proposed by António Campinos in a communication of early March:

‘In response to the ruling finding Rule 28(2) EPC unenforceable, the President of the EPO issued a communication (CA/26/19, dated 7 March 2019) indicating an intention to analyse the following as “potential options for next steps”:

(A) a referral to the Enlarged Board of Appeal by the President of the EPO;
(B) an amendment of Article 53(b) EPC by the AC based on Article 33(1)(b) EPC; and
(C) additional actions in pending appeal cases related to Rule 28(2) EPC.

(….) In short, CIPA’s position is that:
– there are no valid grounds upon which Option A or Option C could resolve the current conflict;
– at least Option B would be unlawful (under the EPC); and
– Options A to C should therefore not be pursued.’

Also (…) CIPA’s position is that, in contrast to Options A to C above, the following options are capable of resolving the conflict in a manner that is lawful and that preserves legal certainty (and, in particular, the legal certainty of rights holders):

(D) acceptance of the current interpretation of Article 53(b) of the European Patent Convention (EPC), and development of best practice and further case law that takes account of that interpretation;
(E) an amendment of EU law governing the patentability of plants, followed by an amendment of Article 53(b) EPC to bring it into line with (amended) EU law; and
(F) postponement of further action unless and until the Court of Justice of the EU (CJEU) issues a ruling on the interpretation of Article 4(1)(b) of the Biotech Directive (and then, if necessary, an amendment of the EPC to bring it into line with the CJEU’s interpretation of the Biotech Directive).’

The conclusion of the CIPA position paper:

‘CIPA’s position is that the above-mentioned conflict (between judicial interpretations of the EPC and Rule 28(2) EPC) should be solved in a lawful manner.

Whilst CIPA has no wish to prescribe any one particular solution to that conflict, we cannot support any actions that:
– are unlawful (either under the European Patent Convention or under EU law); or
– undermine legal certainty, in particular legal certainty relating to the legitimate expectations of rights holders.

For the reasons discussed above, our position is that, at this time:
– there are no valid grounds upon which a further EBA opinion can be obtained under either Article 112(1)(b) EPC (Option A) or Article 112(1)(a) EPC (Option C);
– there are also no valid grounds upon which the EBA could be persuaded (by the Commission Notice) to arrive at an interpretation of Article 53(b) EPC that differs from that set out in G2/12 and G2/13; and
– amendment of Article 53(b) EPC under Option B would be unlawful, regardless of whether that amendment were made under Article 33(1)(b) EPC (which would be unlawful under the EPC) or under Article 172 EPC (which would be unlawful under EU law, and which might also misalign the EPC with a future ruling of the CJEU)

Our position is therefore that the only viable options at this time are as follows.
– Accept the current interpretation of Article 53(b) EPC (Option D).
– Amend EU law and then the EPC (Option E).
– Await the issuance of a ruling of the CJEU (Option F).’

It is not clear whether EPO president Campinos has already submitted the referral of case T 1063/18 to the Enlarged Board of Appeal and when the EBA will decide about it. But considering the reactions in just one week’s time, one can conclude that the referral will unlikely lead to Campinos’ proclaimed aim of restoring ‘legal certainty fully and speedily in the interest of the users of the European patent system and the general public.’ And it is a reason for concern that the Administrative Council, which has often been criticized in the last years for not controlling the president (for instance in the deep social conflicts, which unfortunately are far from over at the EPO) has given this obviously legally very questionable measure its ‘overwhelming support’.


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16 comments

  1. Before asking his lawyers to prepare a referral, he should read CIPA’s document.

    The only correct way is to amend Art 53,b.

    If the present president files a referral as he intends to, then he his definitely stepping in the foots steps of his predecessor who also wanted the EBA to decide according to his wishes and those of the AC.

    This combined with the fact that he has not pushed aside the famous head of human (?) resources and her husband, shows that he is anything but willing to get the staff on his side.
    After all, even members of the boards are staff of the EPO!

    Why are those two still in place, but other BB’s minions pushed aside?

    It is sad to see the EPO in the hands of pseudo managers, who do everything to drive it in the wall!

    Techrights FINGERS OFF!!

  2. According to a communiqué of the EPO dated April 5th, “the President of the EPO has submitted questions to the Enlarged Board of Appeal which relate to the patentability of plants exclusively obtained by essentially biological processes and to decision T 1063/18 of a Technical Board of Appeal of December 2018. In the referral the President of the EPO seeks the Enlarged Board of Appeal to clarify the applicable legal framework”

    https://www.epo.org/news-issues/news/2019/20190405.html

    The referral does not (yet) appear in the register.

    https://register.epo.org/application?number=EP12756468&tab=doclist

    CIPA’s comments do not seem to have impressed the new president and his lawyers.

    The referral is plainly not admissible, and a coarse attempt to twist the arm of the EBA.

    Interesting reading ahead of us!

    Techrights FINGERS OFF!!

  3. Well, well, well.
    The President has published on the EPO.org website a short notice, that he has referred a few questions to the EBA on 5 April.
    Alas, the referral is not online, only the decision T1063/18is linked.

    https://www.epo.org/news-issues/news/2019/20190405.html
    “In the referral the President of the EPO seeks the Enlarged Board of Appeal to clarify the applicable legal framework.”

    This sounds as if he only wishes to know from the EBA if the new rules are valid at all, and therefore the corresponding Guideline passages….
    That answer would be short.
    Only Article 53 is valid, and Rules 27 and 28 in their version before 01 July 2017.

    1. Will the EBA be consulted on all future decisions of the AC?
      Is this an appeal (by any other name) of a BoA decision?
      Is such a request allowed?

      1. No, you have to see it positively. It is an appeal to reason. The President, in his great mansuetude, offers the Enlarged Board a second go to get it right.

      2. The President can refer a question on a point of law to the EBA on which there are “different” decisions by two boards of appeal. The EBA’s answer will not change the outcome of T 1063/18.

        There are no different decisions on whether present R. 28(2) conflicts with Art. 53(b) EPC. The referral might argue that T 1063/18 applies Art. 164(2) (a Rule may not conflict with an Article) differently from how other BoAs have applied it. No other decision applying R. 26-29 to interpret Art. 53 has found a conflict, even though those Rules were enacted to steer the interpretation of Art. 53.

        1. @purple pepper

          I note your interesting suggestion that “The referral might argue that T 1063/18 applies Art. 164(2) (a Rule may not conflict with an Article) differently from how other BoAs have applied it”.

          However, I think that this is as much of a legal dead-end for the referral as is the prospect of finding “different” decisions with respect to Art 53(b).

          In G6/95, the EBA interpreted Art 164(2) as meaning that:
          “the Administrative Council may not amend the Implementing Regulations in such a way that the effect of an amended Rule would be in conflict with the EPC itself”.

          Further, as noted in point 26 of the decision in T1063/18, subsequent EBA case law (such as G2/07) is entirely consistent with this interpretation. For example, G2/07 states that:
          “The limits to the Administrative Council’s law-making powers by means of the Implementing Regulations can be inferred from Article 164(2) EPC”.

          Thus, there are no “different” decisions regarding what happens when an EPC Rule is found to be irreconcilable with an EPC Article. All decisions point to the same conclusion, namely that the provisions of the EPC Article prevail.

          With this in mind, the question(s) referred by the President should make very interesting reading indeed!

          1. The questions are available now.

            It is clear that Art. 164(2) sets a limit on what can be regulated in the Implementing Regulations. The question is where those limits lie. When does a Rule “conflict” with an Article? Point 2.2 of G 2/07 is quite interesting.

            See also point VII.2(4) of G 2/12. Or just go through the whole part VII, in particular VII.2 and VII.4, and try to see what the result would have been if R. 28(2) had already existed.

  4. Dear Attentive Observer
    However justified your anger at the past and present presidents and the AC may be, it should not be a tree that hides the forest. The forest is the very complex and politically-charged situation regarding IP rights on plants – esp. interaction between patents and plant variety protection, farmers rights to seeds, protection of biodiversity.
    Another concern as far as I am concerned is that the likely outcome, i.e. the Enlarged Board of Appeal rejecting the referral, and I agree there are solid legal reasons for that, may turn out to be a Pyrrhic victory from a political standpoint. I mean that it could be used by anti-patent activists to portray the Boards as serving the interests of the agribusiness giants. This would harmful to the public perception of their independence. And I fear this could extend to the EPO at large.

    1. @stakeholder

      If I understand correctly, you are implying that the only legally justified conclusion (ie inadmissibility) the EBA can reach with respect to the referral would – from a PR perspective – look “bad”, and as if the EBA were somehow in the pocket of big (agri)business.

      That the anti-patent lobby would try to portray the outcome this way is quite likely. But does that really mean that the EBA should reach a different conclusion? Reaching a different conclusion would mean that the EBA had ACTUALLY lost its independence. That would be far worse than the situation where a small minority of the public holds the inaccurate and unjustifiable PERCEPTION the EBA is not quite independent enough.

      More to the point, why have the AC and the EPO President set things up so such that the Boards of Appeal – simply by logically and dispassionately applying the law – can possibly be made to look like the “bad guys”? In other words, why are the AC and the President not operating within the bounds of the EPC? (The EPC does not allow the EPO to ignore an EBA interpretation of an Article by introducing a clearly ultra vires Rule. It also does not allow a Board of Appeal decision to be effectively ignored by the submission of a clearly inadmissible referral to the EBA)

      None of this drama is necessary. The CIPA position paper points to two options (E and F) that could LAWFULLY achieve the stated objective of “the Contracting States, the user community and representatives of civil society”. The fact that neither the AC nor the EPO President has even CONTEMPLATED those options is deeply worrying, especially now that the ruling in T1063/18 makes it impossible to maintain the pretence that the Interpretative Notice issued by the European Commission can somehow support a lawful amendment or reinterpretation of the EPC.

      Pressing ahead regardless just makes it plain that the AC and the President are placing political sensitivities ahead of compliance with the law. That is a shameful and unsustainable course of action that could have far-reaching consequences not just for those attempting to subvert the rule of law but also for the long-term viability of the EPO. Whilst that might suit certain anti-patent lobbyists, it remains a mystery to me why neither the AC nor the President can see the writing on the wall.

  5. Dear EPO stakeholder,

    Whether we like or not the decisions G 2/12 and G 3/12 is beside the point. It is also not a question to support the agribusiness giants. The EBA has given its interpretation of Art 53, b) and it should be respected. There is not a tree which hides the forest, there is a legal mechanism which is misused presently, as it has been misused in the past! No more, no less.

    There is a simple way to come out of the problem, that is to amend Art 53, b). Any other way is doomed to fail.

    That law has to adapt to societal changes is not at stake. Every sound person can agree to this, but if a different interpretation is wished, then change the law.

    It cannot be that an administrative decision by a body lacking any popular legitimation, decides how the EPC is to be interpreted!

  6. In my view, there is one positive side to this strange referral. It leaves no doubt that Mr Campinos pursues the aggressive approach of his predecessor towards the Boards of appeal. There is the same disdain for the separation of powers and the same will to marginalize the boards. Whatever the Enlarged Board will decide, the damage done is considerable. If the Enlarged Board accepts to bow down before the President, it will have lost its credibility. And if it dismisses the referral, this will infuriate even more the AC and the President, with more punitive action to be expected. It would have been so much wiser to let the Boards do their job and change the law, if need be. But then, if alpha-males were capable of wisdom, the face of the earth would be different, wouldn’t it?

    1. Well, It also shows Mr. Campinos is not willing to oblige with the EPC either.
      Article 4a EPC would be a perfect start to adress this issue.

      But neither this management nor the previous management, nor the allegedly supervising Administrative Council, wish to bring those who supervise the supervisors into play.

      Therefore, the EPC is ignored, and will continue to be ignored.

      I wonder if the EBA at one point will even state that any amendments to the EPC and its Implementing Regulations, RFees, … are not valid, because Article 4a EPC has not been called once, and therefore the legitimacy of any decision made by the President and the AC (e.g. RFee increases, changes of Rules, changes in the Guidelines, Service Regulations, Extension Agreements, Validation Agreements, …), are not valid if made after 13 December 2012.

      This is not an outcome anyone wishes to come.
      After the loss of the Unitary Patent (Patent with Unitary Effect), this would be another harsh blow, but it would not wonder me if at some point an appelant would start to use a similar reasoning. (But why would he, it would also destroy the basis for his patent.)

  7. The President of the EPO justifies his contested referral by “concerns expressed by the Contracting States, the user community and representatives of civil society who are worried about legal uncertainty resulting from decision T 1063/18”.
    This seems to be less than half the truth. T 1063/18 shed a light on an inconsistency in law created by the legislator. Following the creation of the European patent system, national substantive patent law was harmonized with the provisions of the EPC in order to arrive at a uniform application of patentability criteria by the EPO and the national authorities. However, some contracting states (NL, followed by FR, DE and IT) found it necessary to amend their patent laws following public criticism on patents on plant inventions, expressly excluding patent as products of essentially biological processes from patent protection. Since then, the legal requirements for patents in the contracting states have been different and it should be no surprise that different legal provisions are interpreted differently. Instead of initiating a process for amending the EPC, the EU Commission tried to urge the responsible authorities to interpret the EPC in a way diverging from the relevant decisions of the Enlarged Board of Appeal (Broccoli II and Tomatoes II) which was a much critized initiative. Now, the President follows this course of action with the approval of the Administrative Council. Since the grounds for the referral are not yet public, observers are still keen to learn which divergency in the case law of the Boards, necessary for the referral under Article 112 (1) EPC, is alleged to exist.
    In the present discussion, sometimes the impression is created that the Boards tend to extend the scope of patentability in the EPO’s interest. Broccoli I and II prove the contrary. In these decisions, the Enlarged Board interpreted the exclusion of essentially biological processes for the production of plants much broader than Rule 26 (5) EPC seen in isolation, corresponding to Art. 2 (2) of the Biotech Directive, would have allowed it, by concluding that not just any kind of human intervention can suffice to make a plant invention escape the exclusion. In the Broccoli and Tomato cases, the decisive criterion was to respect the prevailing force of the Convention over its Implementing Regulations.

  8. Even though I am transparent with my interests as shown by my pseudo, I am first of all a European patent attorney and therefore a lawyer who considers that the principles of democracy shall not be disregarded for political reasons. These principles of democracy as they have shaped the EPC are that the president of the EPO and the AC do NOT have legislative power. The legislative power lies in other hands: it could be the AC if it would convoque a Diplomatic Conference, or it would have to be the EU institutions issuing a new law (i.e. a new Directive or Regulation, not a “Notice”), or the CJEU. Only those institutions can adapt the laws to the societal and political will.
    For the safeguarding of those principles, the EBA shall reject the questions referred by the President. The political turmoil surrounding this topic shall not influence its role of applying the principles set by our democratic laws.

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