The high-profile issue whether plants obtained by essentially biological processes can be patented will be referred to the Enlarged Board of Appeal (EBA) of the EPO.
This has been decided during the 159th meeting of the Administrative Council earlier this week. According to an EPO press release, contracting states expressed their concerns with regard to the legal uncertainty caused by decision T 1063/18 (analysis here) during the meeting and president António Campinos received ‘broad and overwhelming support’ for his proposal to refer the case to the EBA.
‘The aim is 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).’
According to the press release, Campinos announced that the EPO ‘will proceed swiftly to submit the referral. The EPO endeavours to restore legal certainty fully and speedily in the interest of the users of the European patent system and the general public.’
As reported earlier on this blog, an EPO Board of Appeal decided on 5 December 2018 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.
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 had also 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.
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I wonder on which legal basis this referral is made, considering that there are no conflicting decisions.
Article 112(1)(b): 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.
I trust that Campinos’s innovative lawyers will find a way. After all, Santo António de Lisboa is the patron saint of lost things.
The suggested referral does not change the fact that G 2/12 and G 3/12 exist, and what that the AC and the President want is for the EBA to revise its case law.
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 only time the EBA changed its case law was in case of an opposition by the proprietor himself. In G 1/84, such an opposition was admissible. From G 9/93 onwards, such an opposition was not any longer possible. The route to this change of case law was prepared in decisions G 9/91 and G 10/91, according to which the opposition is a contentious procedure between a proprietor and at least one opponent. In the meantime, the opponent has the possibility to, limit its patent, cf. Art 105 a), b), c), so all those decisions are not any longer relevant. .
The first question to ask is whether such a referral is at all admissible. There is no change or divergent case law of the Boards. Why should the EBA say anything different from what it said before?
The envisaged referral actually requires the Enlarged Board to disregard its own case law. If G 3/08, the referral of Mrs Brimelow about CII (to please judges in her home country), was considered not admissible, this referral is even less admissible.
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.
The only way to change the situation is to amend Art 53, b). But this is a solution which is more complicated and not so easy to implement. But this is the only “clean” solution. The AC and the President should have the courage to use the correct means to incorporate any societal change into the EPC.
After all the EPO has lots of important member states, which are not member of the EU, and the 27(28?) member states of the EU should not impose their views on the non-EU member states. If all member states of the EPO agree, and the correct procedure is applied, then there is nothing to say, but any attempt to influence the case law of the EBA should be resisted.
Techrights: FINGERS OFF!! Directly or indirectly!!
Appeal case T 1063/18 as such is of course not referred at all to the Enlarged Board. There is no way the President can do that. The President may refer a point of law to the Enlarged Board, but such a “point of law” is not an appeal case. The point of law is not even in connection with a specific patent application or patent. A point of law is a general question on a legal topic.
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.
Another significant aspect is the case is that the independence of the Boards of Appeal may be a pretense for non-EU member states of the EPO to shield the Boards of Appeal against the influence of EU legal rules and give them disproportionate influence over the EPO case law.
With all due respect, you appear to be living in some kind of bizarre, parallel universe where the Interpretative Notice from the Commission not only has persuasive legal authority under the EPC but is in fact more persuasive than prior decisions of the judiciary of BOTH the EPO and an EU Member State (the Netherlands).
In this plane of reality it is usually left to the judiciary to reach their own, independent interpretations of legislation. Whilst they can use a range of interpretative tools and approaches, a non-contemporaneous, non-binding opinion from an executive body of a different international organisation comes pretty low down the list of factors for the EPO’s judiciary to consider. Also, it makes absolutely no sense for the judiciary to artificially elevate the EC Notice to a level of persuasive significance whilst it remains possible that the Court of Justice of the EU could (eventually) reach a contrary view.
The factors that you mention (statutory protection for plant varieties and the EU biotech directive) have already been exhaustively considered by the EBA. I really do not know what else of relevance you expect to find there.
There are a number of viable options for resolving the present impasse. In common with the previous option (of amending the Implementing Regulations), making a referral to the EBA under Article 112(1)(b) is not one of them. The recent position paper from CIPA includes a more detailed discussion of the reasons why the referral is doomed to failure, as well as an indication of options that could prove more fruitful (but that the AC and the President appear to be determined to ignore). You may not agree, but it is worth a read nonetheless:
Dear epo stakeholder,
The day EPO management stops considering immunity synonym to impunity, it will be possible to have some sympathy with your point of view. As we are far away from this, please save us from such statements.
Nothing against adapting the legal framework to societal development, but use correct means!
Any attempt to twist the arm of a legal body whose perception of independence has allegedly been increased should be resisted!
Techrights: FINGERS OFF!!
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.
And then the EPO expects the complaints before the German Federal Constitutional Court re independence of the Boards of Appeal to be dismissed, and the complaint about the UPC not to be admitted!
If a supplementary proof of the lack of independence of the BA was needed, here it is.
If the EBA has to decide according to the wishes of the President of the EPO and of the AC, then it might be more honest to decide that the EBA has not any longer the power to interpret the EPC, and any the decision of the management of the EPO has to be executed.
I am curious to see what reasons for the referral will be brought up by the lawyers working for president of the EPO.
I have rarely seen such an outrageous behaviour!
The AC really seems wanting to see a repeat of what happened in G 2301/15 and G 2302/15.
Techrights: FINGERS OFF!!!
The tone of the internal communiqué is not only unpleasant. It is also deeply disturbing.
There are two main reasons why it is so disturbing.
Firstly, it relies entirely upon “alternative facts”. For example, it pretends that the Boards of Appeal (eg by way of decision T 1063/18) are somehow responsible for the current “legal uncertainty” … whereas in actual fact the only reason for the current predicament is that the EPO’s management is trying hard to override provisions of the EPC that establish a separation of powers between the “judiciary”, the “executive” and the “legislature”.
It comes to something when the EPO not only refuses to abide by a ruling of the EBA but then desperately casts around for further reasons for inaction when their initial attempt at stalling has (rightfully) been struck down by the Boards. This is nothing other than wilful blindness to the plain fact that there are no legitimate means by which the EPO’s management can (on its own) overturn the EBA’s current interpretation of Article 53(b) EPC.
Secondly, the reliance upon falsehoods / misrepresentations in the communiqué signals a clear intention upon the part of the EPO’s management to continue with its efforts to use illegitimate means to achieve its stated objective. However, when it comes to the law, the ends cannot justify the means. That is, regardless of how popular the EC’s interpretation of the Biotech Directive may be, using clearly illegal (or obviously groundless) means to try to impose that interpretation can NEVER be justified.
If fundamental provisions of the EPC are broken by the EPO’s management, then the EPC becomes broken full stop. Attentive Observer has pointed to the possible (worrying) implications of this for the constitutional complaints in Germany. There will no doubt be many more, equally worrying implications with respect to other countries (and/or the EPC itself). However, because of the above-mentioned wilful blindness, it appears that EPO management is prepared to happily march us all towards that precipice.
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