Development in plant protection II
Enlarged Board of Appeal finds that plants or animals obtained from biological processes are excluded from patentability under the EPC
In its recent decision G 3/19, the Enlarged Board of Appeal (EBOA) of the European Patent Office (EPO) came to the conclusion, that plants or animals obtained from essentially biological processes, i.e. conventional breeding processes, are excluded from patentability under the European Patent Convention (EPC). In G 3/19, the EBOA has taken a decision on a long-standing controversy regarding the patentability of plants or animals obtained via these methods and reversed its own previous stand on this matter.
According to Art. 53(b) EPC, plant or animal varieties or essentially biological processes for the production of plants or animals are excluded from patentability. It has been a long-standing question whether the exclusions of Art. 53(b) EPC also extend to products obtained from essentially biological processes. In its previous decisions G 2/12, G 2/13 (“Tomato II, Broccoli II”), the EBOA had come to the conclusion that this was not the case. The exclusion from patentability for essentially biological processes was not to be extended to plants or animals obtained from such processes.
In response to this decision, the Administrative Council amended the Implementing Regulations of the EPC and introduced R. 28(2) EPC, which explicitly excluded “plants or animals exclusively obtained by means of an essentially biological process” under Art. 53(b) EPC. In this way, the newly introduced rule directly contradicted the previous interpretation of Art. 53(b) EPC by the EBOA.
In the landmark decision T 1063/18, the Technical Board of Appeal considered the newly introduced R. 28(2) EPC void in view of previous EBOA decisions G 2/12 and G 2/13 (we reported). In reaction to this decision, the president of the EPO referred the question on the interpretation of Art. 53(b) EPC back to the EBOA on the basis of Art. 112(1), (b) EPC in order to ensure uniform application of the law.
In G 3/19, the EBOA now abandoned its previous understanding of Art. 53(b) EPC and came to the conclusion that in view of R. 28(2) EPC, Art. 53(b) EPC must be understood to also exclude any products obtained from essentially biological processes. The EBOA based its decision on a “dynamic interpretation” of the law. According to the EBOA, a particular interpretation which has been given to a legal provision could never be taken as “carved in stone”, because the meaning of the provision may change or evolve over time. Hence, the introduction of R. 28(2) EPC changed the interpretation of Art. 53(b) EPC in such a way as to exclude any products obtained from essentially biological processes from patentability.
Practically, the decision takes effect on July 1, 2017 and has no retroactive effect on patents granted before that date, or on pending European patent applications seeking protection for such claims which were filed before that date. Hence, it could be advisable to analyse the current patent and application portfolio regarding claims for products obtained from essentially biological processes since for applications filed before July 1, 2017, protection for products from such processes may still be obtained.
It is worth noting, however, that the decision G 3/19 does not impact the patentability of plants and plant materials obtained by technical processes – such products remain patentable under the EPC.
Dr. Simon Müller (author) Dr. Barbara Engels