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04.10.19

The patentability of plants and animals obtained by essentially biological processes – a referral to the Enlarged Board of Appeal

The President of the EPO has asked the Enlarged Board of Appeal (EBA) to decide whether or not plants or animals exclusively obtained by means of an essentially biological process are patentable at the EPO, under case no. G3/19.

Background

A review of two Enlarged Board decisions, G2/12 and G2/13, by the European Commission found the Board’s interpretation of Article 53(b) to be at odds with Article 4 of Directive 98/44/EC of the European Parliament and of the Council on the legal protection of biotechnological inventions (“The Biotech Directive”), which states that “essentially biological processes for the production of plants or animals” should not be patentable. In an effort to preserve legal harmony, the Administrative Council of the EPO implemented an amendment to R. 28(2) EPC to follow this interpretation.

Decision in T1063/18

New R. 28(2) EPC states:

“Under Article 53(b), a European patent shall not be granted in respect of plants or animals exclusively obtained by means of an essentially biological process.”

In decision T1063/18, the Board of Appeal considered that R. 28(2) EPC is in direct conflict with Article 53(b) EPC, as interpreted in both the Enlarged Board decisions G2/12 and G2/13. The Board held that R. 28(2) EPC should be ignored, and claims directed to plant products obtained by an essentially biological process are indeed patentable.

As such, the Board found that the applicant’s claim directed to a pepper plant obtained by an essentially biological process was allowable.

Referral

In response to T1063/18 and in accordance with Article 112(b), the questions referred to the EBA are as follows:

  1. Having regard to Article 164(2) EPC, can the meaning and scope of Article 53 EPC be clarified in the Implementing Regulations to the EPC without this clarification being a priori limited by the interpretation of said Article given in an earlier decision of the Boards of Appeal or the Enlarged Board of Appeal?
  2. If the answer to question 1 is yes, is the exclusion from patentability of plants and animals exclusively obtained by means of an essentially biological process pursuant to Rule 28(2) EPC in conformity with Article 53(b) EPC which neither explicitly excludes nor explicitly allows said subject-matter?

Pending the outcome of this referral, any proceedings before the examining division or the opposition division whose outcome depends entirely on the referral will be stayed. Full details of the stay in proceedings can be found below.

https://www.epo.org/law-practice/legal-texts/official-journal/information-epo/archive/20190410.html

 

If you have any questions on this topic, please contact Andy Cloughley at andycloughley@mskpatents.com.

Article written by Romi Korotana.

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