As already reported by Kluwer Patent Blog, on 5 December 2018 (case T 1063/18) the EPO’s Technical Board of Appeal 3304 found that Rule 28 (2) is contrary to article 53 of the European Patent Convention (“EPC”) and that, therefore, it does not prevent the patentability of new pepper plants and fruits with improved nutritional value (patent EP 2753168). As a result, the Board referred the case to the Examining Division.

According to paragraph b) of article 53 “European patents shall not be granted in respect of (…) plant or animal varieties or essentially biological processes for the production of plants or animals; this provision shall not apply to microbiological processes or the products thereof”. On the other hand, Rule 28(2) states that “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”.

Readers will recall that Rule 28(2) was – rather surprisingly – approved by the EPO Administrative Council following the publication of a Communication dated 8 November 2006, where the EU Commission expressed the opinion that plants should not be patentable. Here we saw a body (i.e. the Commission) of an international organisation (the EU) telling a quasi-judicial body of a different international organisation (i.e. the EPO’s Board of Appeal) how they should go about interpreting article 53 of the EPC, proving too much to handle for the latter.

Against this background, it should not come as a complete surprise that a Technical Board of Appeal of the EPO, as one would expect from a presumably independent quasi-judicial body, has taken the article 164(2) EPC route to bypass Rule 28(2). According to this recent decision, Rule 28(2) may not be applied as it contradicts article 53 EPC, as interpreted by the case law of the Boards of Appeal.

All in all, despite the Commission’s attempts to sabotage patents on tomatoes, broccoli and peppers, this Board of Appeal did precisely what one would have expected an independent judicial body to have done. If the parties to the EPC feel that plants and/or their fruits should not be patentable, they are free to convene at an international conference and amend the provisions of the EPC. Although the EPO has never exactly been the paradigm of a democracy driven by the separation of powers, putting pressure on the Boards of Appeal in order to try to avoid such conference from having to take place does a disservice to their independence.


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  1. I disagree with the suggestion that “If the parties to the EPC feel that plants and/or their fruits should not be patentable, they are free to convene at an international conference and amend the provisions of the EPC”.

    This is because, strictly speaking, the EU Member States would be legally obliged to do their best to block any such amendments to the Articles of the EPC. The reasons for this are as follows.

    Firstly, Article 4(1)b of the Biotech Directive has not yet been interpreted by the CJEU. This means that the interpretation of that provision is NOT acte éclairé.

    Secondly, a decision of a Dutch court has interpreted that provision in the same way as the Boards of Appeal of the EPO have interpreted Article 53b EPC. This makes it is impossible to argue that any different interpretation of Article 4(1)b of the Biotech Directive is acte clair.

    In the light of these two observations, any amendment to the Articles of the EPC intended to overturn the Enlarged Board of Appeal’s decisions in G 2/12 and G 2/13 would contravene EU law. Specifically, they would prevent applicants for European patents from exercising their right to obtain (prior to the issuance of an unappealable decision rejecting their application) a preliminary reference to the CJEU in order to determine the correct interpretation of Article 4(1)b of the Biotech Directive.

    Thus, amending the Articles of the EPC would, from an EU law perspective, be even more risky than amending the implementing regulations. This is because it could result in a CJEU ruling that would effectively require all EU Member States to either reverse the amendments or withdraw from the EPC.

    This is unlikely to change unless and until someone asks the CJEU what they believe to be the correct interpretation of Article 4(1)b of the Biotech Directive. For the “pressure groups” seeking to change the (interpretation of the) law, I guess that the trouble with this option is that the CJEU may well agree with the Enlarged Board of Appeal and the Dutch Court. I therefore have no doubt that the efforts of groups such as “No patents on seeds” will continue to focus upon the political (as opposed to the judicial) arena.

    1. Fair enough, although to accomodate your conerns, EU member states could amend the Directive. It should be easier that amending the EPC, which would require the consent of non-EU parties.

      1. That would be a valid option. However, I am not certain whether even this would be acceptable solution for groups such as “No patents on seeds”. This is because an amended version of the Biotech Directive would not have retroactive effect. As you may recall, another of the problems with the amendments to Rules 27 and 28 EPC were that, contrary to principles established in EPO case law, they purported to apply (retroactively) to all pending cases. This was almost certainly no accident, as it aligned with the demands of those concerned by the effects of G 2/12 and G 2/13.

  2. With a decision of the CJEU, an amendment of R 27-28 could have been envisaged, but in the respect of the non-EU member states. With a mere different interpretation by the Commission, no reason to amend, and even worse retroactively the law.

    Thanks to Concerned Observer not only for its detailed knowledge of the EU legislation, but also to share it with us in such a nice and polite manner.

    I maintain the view that the then President of the EPO saw in this change a further way to bash on the Boards as they did not behaved as he wanted.

    Techrights: FINGERS OFF!!!

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