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 EPO Board of Appeal came to this remarkable decision earlier today in
case T 1063/18.
By Frits Michiels and Bart van Wezenbeek
Those who thought that the battle on patenting of plants had gotten a final blow by the amendment of the European Patent Convention last year and the approach of the EPO examination following that (see this post), have not counted on the EPO Boards of Appeal.
The discussion on the patentability of plants has a long history within the EPO, which culminated in the amendment of Rules 27 and 28 EPC by the Administrative Council entering into force on 1 July 2017 (see this post). This amendment followed a Notice of the European Commission of 3 November 2016, indicating that the Biotech Directive 98/44 should have been interpreted as that plants obtained by essentially biological processes are not patentable.
Amended Rules 27 and 28 EPC were considered as clarifying the interpretation of Article 53(b) EPC, which excludes essentially biological processes from patentability, but which does not provide for an exclusion for the products thereof. According to the Administrative Council, the clarifying nature of the amendments implies that the law has always been in conformity with that interpretation and may hence be applied to pending cases and thus even to granted patents in opposition.
The present case, however, dealt with a patent application, European Patent Application EP 2753168, entitled “New pepper plants and fruits with improved nutritional value”, filed in the name of Syngenta Participations AG. This was rejected by the Examining Division in view of amended Rules 27 and 28 EPC. Syngenta Participations AG filed an appeal against this rejection (T1063/18), for which the Oral Proceedings were held today, 5 December 2018.
The Board of Appeal 3.3.04 of the European Patent Office chaired by Ms. Gabriele Alt was extended to 5 members for the purpose of this appeal. The Board decided that amended Rules 27 and 28 EPC are in conflict with Article 53(b) EPC. The correct interpretation of Art. 53(b) has been provided by the Enlarged Boards of Appeal in the cases G2/07 and G1/08 and the corresponding cases G2/12 and G2/13 (tomato and broccoli cases), after an extensive study of the legislative history of this provision and following the interpretation standards that have to be applied to the European Patent Convention. Article 164(2) EPC stipulates that in such cases, the Articles shall prevail over the Rules. This would mean that plants that are produced according to essentially biological processes need to be held to be patentable and can no longer be refused because they would not comply with the requirement of Rule 28(2) EPC. Hence, the practical consequence of this is that the amendment of Rules 27 and 28 EPC as introduced in 2017 is void.
The appeal further did not finally conclude on the patentability of the invention, since the case was remitted back to the Examining Division to consider other patentability requirements (Art. 56, inventive step, and Art. 83, clarity).
Apparently, today’s Board found the matter so crystal clear that they did not see a need for referring the question to the Enlarged Board of Appeal. It also means that Bayer, who saw its broccoli patent refused in opposition now probably can successfully appeal that decision.
The ball is now back in the court of the legislator and, if they want to ensure that no patents are granted on plants (and animals) produced by essentially biological processes, such as breeding, they have to change Art. 53(b) EPC, which can only been done via an intergovernmental conference. A further issue is whether they could introduce a retroactive effect as has been done with the amendments on Rule 27 and 28. It has already been pointed out in the comments on the Bayer broccoli case that this would effectively need to be considered contra legem. Further, novel discussion on this case may also trigger considerations on the patentability of mushrooms, seaweed and tissue cultures, like organoids.
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Sounds reasonable to me.
The way in which the Commission reacted to the Broccoli decision (and the Administrative Council of the EPO, for that matter) was very light-hearted and unprofessional. Serves them well.
It was difficult to understand at the time why the then President of the EPO rushed to abide by comments of the Commission and proposed to introduce in the Implementing regulations further amendments to R 27 and 28. If it had been a decision on the CJEU, why not, but even then, there are 38 member states at the EPO and only 28/27 in the European Union.
One can even be inclined, that in its rage against the Boards, the then President took every pretext to bash on them. Personal revenge should however not be the motor for changing the rules of a game.
The ball is indeed now again in the court of the AC and it is good so.
It is not the first time that the Boards do not agree on a decision taken by the AC. See G 6/95. On the other hand, when one sees the actual draft RPBA, according to which it is mandatory for a Board to send an annex to the summons, one can only smile at what happened a while ago.
Clarity is Art. 84 EPC, not 83, which concerns sufficiency of disclosure.
It was always clear that no Board of Appeal could ever reach a (convincing) decision upholding the amendments to Rules 27 and 28 EPC.
The original proposal from the EPO’s Patent Law Committee (CA/PL 4/17) explicitly acknowledges (eg in point 46) that rules found to be in conflict with the Articles of the EPC would not be upheld by the Boards of Appeal. The PLC nevertheless proposed proceeding with amendments to Rules 27 and 28.
Based upon points 51 to 54 of CA/PL 4/17, it seems that the sole excuse for the proposal to amend the rules was that there was a chance (NOT a certainty) that the Boards of Appeal might accept the EU Commission Notice as overriding ALL of the Enlarged Board of Appeal’s conclusions in G2/12 and G2/13 regarding the interpretation of Article 53(b). That excuse was, of course, wilfully blind to the fact that, as a non-binding, non-contemporaneous interpretation of the Biotech Directive by a non-judicial body, the EU Commission Notice could not possibly be viewed as decisive by the Boards of Appeal. Moreover, given that there was a prior ruling of a (Dutch) national court that reached the same conclusion as in G2/12 and G2/13, the Boards of Appeal never had any choice but to view that prior, judicial ruling as being more persuasive than the EU Commission Notice.
The fact that the Administrative Council rubber-stamped the rule changes despite all of these points being brought to their attention raises some serious questions. For example, it begs the question of whether the AC approved the rule changes because they have very poor judgement (ie are not good at determining whether they are on solid legal ground or not), or instead because they viewed it as convenient to use the EPC as a political football (ie to temporarily pacify certain stakeholders at the expense of those applicants and patent proprietors who have since been forced to file appeals against rejections / revocations based upon rules that the AC always knew were in conflict with the Articles of the EPC). I will be frank: neither of those possible answers to that question represents an acceptable situation. The public and the users of the patent system in Europe deserve better from the AC.
In French we say that “when politics enter in the court room the law exits”.
The way the EPO and its Administrative Council tried, with this new rule 28-2, to twist the well-established situation on the patentability of products resulting from essentially biological processes is a perfect illustration of this saying.
Fortunately the law prevailed …….. this time.