The landmark decision of the Technical Board of Appeal in case T 1063/18 concerns the appeal by an applicant against the Examining Division's decision to refuse its European patent application for the sole reason that the claimed subject-matter would allegedly be a plant exclusively obtained by means of an essentially biological process which fell within the exception to patentability according to Article 53(b) and newly introduced Rule 28(2) EPC that entered into force on 01.07.2017.
Said Technical Board of Appeal decided in an enlarged composition (three technically and two legally qualified members) that Rule 28(2) EPC (which stipulates that under Art. 53(b) EPC European patents shall not be granted in respect of plants or animals exclusively obtained by means of an essentially biological process) is in conflict with Article 53(b) EPC as interpreted by the Enlarged Board of Appeal in its decisions G 2/12 and G 2/13 (Tomato II and Broccoli II). In these Tomato II and Broccoli II cases, the Enlarged Board of Appeal decided that the exclusion of essentially biological processes for the production of plants in Article 53(b) EPC did not rule out the allowability of a product claim directed to plants or plant material.
As according to Article 164(2) EPC, the provisions of the Convention prevail over the Implementing Regulations of the EPC, plant product protection is possible at the moment before the EPO.
Therefore, the EPO Contracting States together with the European Patent Office are currently discussing to find a solution in the short term following said decision T 1063/18 in order to restore legal certainty for applicants and the general public. On 05.04.2019 the President of the EPO has submitted questions with regards to the applicable legal framework to the patentability of plant products to the Enlarged Board of Appeal. All proceedings before the EPO Examining and Opposition Divisions in which the decision depends entirely on the outcome of the Enlarged Board of Appeal's decision will be stayed ex officio until the Enlarged Board of Appeal issues its decision.