The European Patent Office ‘will consider possible next actions’ together with the EPO Member States after a high-profile decision of a Board of Appeal earlier this week, concerning the patentability of plants. In case T 1063/18, the BoA decided that EPC Rules which were introduced by the EPO Administrative Council in 2017 to exclude plants or animals from patentability, were in conflict with 53(b) of the European Patent Convention and they can therefore be considered void.
The decision opens a new chapter in the debate concerning the patentability of plants or animals exclusively obtained by means of an essentially biological process. Late October the European Patent Office revoked a Bayer patent covering a type of broccoli adapted to make harvesting easier, because of the 2017 amendment of the Rules (27 and 28 EPC) by the EPO’s Administrative Council.
Earlier this week however, Technical Board of Appeal 3304 decided in case T 1063/18 (on a patent on pepper plants owned by Syngenta (EP2753168)) ‘that Rule 28(2) EPC (…) is in conflict with Article 53(b) EPC as interpreted by the Enlarged Board of Appeal in decisions G 2/12 and G 2/13’ – also known as the Tomatoes II and Broccoli II cases. In practice this means that plants and animals are to be held patentable again. Today, the BoA published a report about its decision here; the text is available at the bottom of this blogpost.
In reaction to a query by Kluwer IP Law, the EPO came with a statement as well: ‘Following the adoption in November 2016 of a Notice by the European Commission on the patentability of plants produced by non-technical processes, the EPO’s Administrative Council amended the relevant legal regulations, which took effect on 1 July 2017. Just as the EPO and its Member States have responded effectively to such developments previously, they will now consider possible next actions following Wednesday’s decision in case T 1063/18. The European Patent Office played no part in the Board of Appeal’s (BoA) decision, which was taken by the BoA in its capacity as a fully independent body.’
Chaotic
What will happen next is not clear. The organization No Patents On Seeds, which had hailed the revocation of the Bayer broccoli patent as ‘an important success for the broad coalition of civil society organizations against patents on plants and animals’, said a ‘chaotic legal situation’ has been created by the BoA decision. It declared: ‘This has put the EPO into conflict with its 38 member states that decided to stop these patents, such as those on broccoli and tomatoes derived from conventional breeding.’ No Patents On Seeds is clear about what it thinks should be the consequence of the BoA decision: ‘The EPO must suspend all pending patent applications on plants and animals until sufficient legal certainty and clarity is achieved.’
The exclusion of plants and animals from patentability was introduced by the EPO’s Administrative Council in the EPC two years ago, following a Notice of the European Commission, clarifying that the Directive on Biotechnological Inventions (98/44/EC) intended to exclude these products ‘exclusively obtained by means of an essentially biological process’. Earlier, in the decisions G2/12 and G 2/13 of 2015, the Enlarged Board of Appeal had ruled that certain tomatoes and broccoli were patentable.
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BoA Communication: Decision in case T 1063/18 on the patentability of plants
7 December 2018
Case T 1063/18 concerns the appeal by the applicant against the decision of the examining division to refuse European patent application no. 12 756 468.0 (publication no. EP 2 753 168) for the sole reason that the claimed subject-matter falls within the exception to patentability according to Article 53(b) and Rule 28(2) EPC (here: plants exclusively obtained by means of an essentially biological process).
At the oral proceedings, which took place on 5 December 2018, Technical Board of Appeal 3304, in an enlarged composition consisting of three technically and two legally qualified members, held that Rule 28(2) EPC (see OJ 2017, A56) is in conflict with Article 53(b) EPC as interpreted by the Enlarged Board of Appeal in decisions G 2/12 and G 2/13. The Board referred to Article 164(2) EPC, according to which the provisions of the Convention prevail in case of conflict with the Implementing Regulations, and decided to set the decision under appeal aside and to remit the case to the examining division for further prosecution.
The written decision containing the board’s full reasons is expected to be issued early next year.
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I have to say that the rhetoric from “No patents on seeds” is beginning to seriously grate. Whatever one’s views on the patentability of plants deriving from essentially biological processes, it is simply outrageous to blame the Boards of Appeal for any “chaos”, or to imply that they are somehow caving in to pressure from industry. This is because if there is any “legal chaos” at this time, it is a direct result of the Administrative Council lamely caving in to pressure in 2017 from groups such as “No patents on seeds”. The Board of Appeal has simply done its job. As I have pointed out before, it was always foreseeable that this would be the end result… and it is a result of which the AC were repeatedly warned.
To expect any other decision would have been to hope that the Boards of Appeal would have caved in to political pressure. In other words, it would have been to hope that the Boards of Appeal would have not exercised their judicial independence.
With regard to the demand from “No patents on seeds” for the EPO to suspend examination of pending cases, I would simply point out that there is no legal basis for this. (Though, strictly speaking, there was also no legal basis for the suspension that happened in 2016-2017.) So, in essence, “No patents on seeds” appears to be demanding that the EPO (again) act in contravention of the EPC. In this respect, I would ask that organisation to reflect on how they would feel if the boot were on the other foot… and the outrage that they would rightfully feel if, at the behest of industry, legal provisions were bent and broken by a legal body in a manner that infringed upon the rights of plant growers.
There are, of course, perfectly legal ways in which patent law in Europe can be changed in the manner demanded by “No patents on seeds”. If those legal means were used, then I would have no objection. The trouble seems to be that “No patents on seeds” wants to pretend that the law as it currently stands should be interpreted in a manner that suits them. Even having lost repeatedly in the courts on this point does not appear to have persuaded them that matters are perhaps not as clear-cut as they pretend. For this reason, it appears that those of us working in the field of patent law have not yet seen the last of unsavoury and indefensible attempts to subvert the rule of law in Europe.
I can only agree with Concerned Observer. If the European legislator in charge of the EPC wants a change it is its right to do so. But then it should be done in a proper way, and not not by merely amending the implementing regulation through an AC decision. If something needs to be changed, it is by amending the EPC, but not in such a sneaky way.
However any amendment to the EPC should only be the consequence of a fair discussion/debate held in the member states and their democratic representative bodies.
Even if one does not necessarily share the position of the BA, supremacy of law should remain. In the contrary the door is opened to the arbitrary and this is not good.
In the future, should it see the light, one could imagine that in case of a decision of the UPC fundamentally diverging from the case law on validity developed over years by the Boards of Appeal or the Enlarged Board of Appeal, the AC of the EPO could impose the view of the UPC by an amendment of the Implementing Regulations. This should not happen. After all, the EPO has 38 member states, not just 28/27!
The hope of the promoters of the UPC is certainly to dwarf the EPO and silence its Boards of Appeal, but this should not be accepted. Lobbyism, and certainly of this kind, has to have limits.
Techrights: FINGERS OFF!!
Rather than the AC “caving in”, could the rule change not be thought of as the representatives of the national governments of the EU member states following the line required of them by the EU Commission?
No, it could not. This is because to accept that proposition would be to misrepresent the role of the EU Commission in interpreting existing EU laws.
The EU Commission is an EXECUTIVE body. Thus, whilst it is perfectly entitled to its views on the interpretation of legislation, those views are by definition NON-BINDING. As is admitted in the EU Commission Notice (and the documents produced by the EPO), ONLY the CJEU is competent to provide a binding interpretation of any EU law.
Today’s news regarding the CJEU’s interpretation of Article 50 TEU provides a perfect illustration of why it is dangerous to give too much weight to the views of the EU Commission on the interpretation of EU laws. That is, whilst the EU Commission had expressed the view that the UK could not unilaterally withdraw its notification under Article 50, the CJEU ruled that it could. Thus, the interpretation put forward by the EU Commission was WRONG.
So, bearing this in mind, would you still be happy to characterise the EU Commission as having any power whatsoever to REQUIRE the Member States of the EU to follow the Commission’s preferred interpretation of an EU law?
Indeed, given that the intended end result of the amendments to the EPC was to contravene Article 267 TFEU (ie remove the right of patent applicants to obtain a ruling from the CJEU on Article 4(1)b of the Biotech Directive), it is clear that the EU Member States had a legal obligation to block those amendments. That is, they were REQUIRED under EU law NOT to consent to the proposed amendments.
Thus, in summary, the representatives to the AC from the EU Member States ignored a binding obligation under EU law, and instead followed a non-binding interpretation from the EU Commission. The hope may have been that the obvious problems with this approach would be swept under the carpet, by the judiciary mutely accepting a subversion of the rule of law. However, at least at the EPO, the judiciary has shown that it is not so easily deprived of its independence and has called out the amendments for what they always were, namely incompatible with the EPC.
In this respect, and whilst you are perfectly entitled to your own views, it is undeniably accurate to say that the AC “caved in” to political pressure with regard to the amendments to Rules 27 and 28 EPC. Unless you are trying to construct a false narrative, it is pointless pretending otherwise.