EPO Board of Appeal finds that plants *ARE* patentable at the EPO - Rule 28(2) EPC is unenforceable

By Jim Robertson - Patent Attorney | Partner

We have previously reported[1] on the introduction of new Rule 28(2) EPC regarding the patentability of plants and animals obtained by “an essentially biological process”. As detailed in our November 2018 article[2], the first case to go to appeal was scheduled to take place on 5 December 2018. That hearing has now taken place and a decision has issued.

Background

In its March 2015 decisions G2/12[3] and G2/13[4], the Enlarged Board of Appeal found that Article 53(b) EPC (which says that "essentially biological processes for the production of plants" are excluded from patentability) does not exclude product claims directed to plants or plant material from patentability.

Therefore, a plant variety obtained by means of an essentially biological process is not excluded from patentability under the provisions of Art 53(b) EPC, i.e. can be patented.

This caused significant political upheaval (and lobbying), with the end result that new Rule 28(2) EPC was introduced, which states that:

"(2) Under Article 53(b), European patents shall not be granted in respect of plants or animals exclusively obtained by means of an essentially biological process."

As we stated in our July 2017 article, "[T]his new Rule 28(2) EPC directly conflicts with (indeed, it is explicitly intended to conflict with) Article 53(b) EPC, as interpreted by the Enlarged Board of Appeal in its decisions G2/12[3] and G2/13[4]. As such, it should be unenforceable."

This case hinges on the separation of power at the EPO - the legislature, the judiciary, and the executive. The legislature enacted the European Patent Convention. The executive (in the form of the Administrative Council) amended the implementing regulations to bring new Rule 28(2) EPC into force. Article 112 EPC[5] confirms that the decisions of the Enlarged Board of Appeal are binding.

The European Patent Convention states that "In case of conflict between the provisions of this Convention and those of the Implementing Regulations [also referred to as the "Rules"], the provisions of this Convention shall prevail."

So it should have been fairly straightforward - decisions G2/12 and G2/13 say that Article 53(b) EPC (which says that "essentially biological processes for the production of plants" are excluded from patentability) does not exclude product claims directed to plants or plant material from patentability. Therefore, a plant variety obtained by means of an essentially biological process is not excluded from patentability under the provisions of Art 53(b) EPC, i.e. can be patented.

However, the Administrative Council (despite numerous submissions from industry and professional representatives) introduced Rule 28(2) EPC in an attempt to prevent them from being patented.

The end result of all of this was various patent applications being refused, and the current appeal.

The decision

The appeal case is T1063/18 (European Patent Application EP12756468.0; published as EP2753168[6]).

The decision being appealed is a decision of the examining division to refuse the patent application in accordance with the provisions of Article 53(b) EPC and Rule 28(2) EPC.

Board 3.3.04 heard the case and, as noted in our November 2018 article[7], the Board was extended to include two additional members, including one legally qualified member.

The Board decided that amended Rules 27 and 28 EPC are in conflict with Article 53(b) EPC, whose meaning has previously been decided in cases G2/07, G1/08, G2/12 and G2/13. Therefore, the Board of Appeal has found that Rule 28(2) is unenforceable.

On the basis of that finding, the Board has remitted the case back to the Examining Division to consider other patentability issues.

What will happen next?

Although not binding case law, this case should be highly persuasive for all other Boards of Appeal, and should be consistently followed. The written decision (when it issues) should be interesting reading.

In terms of this specific case, so long as the other patentability issues are satisfied, a granted patent should issue.

Regarding other cases, the appeal on EP2825024[8] (Nunhems/Bayer) is being heard by Board 3.3.04 and so their decision in this case will clearly be followed. Regarding the opposition against EP2166833[9] (Zeraim/Syngenta), the decision in this case should resolve the Article 53(b) EPC patentability issues.

For applications pending at the EPO, the examining divisions should follow the decision on this case.

In terms of Rule 28(2) EPC (indeed, all of the changes to Rules 27 and 28 introduced by the Administrative Council), our hope is that the Administrative Council will "clean up" the Implementing Regulations by rescinding its 29 June 2017 decision[10] amending Rules 27 and 28 EPC. Given the Board of Appeal's decision on this case, it should (hopefully) not be a politically difficult decision for the Administrative Council members.

If politicians want to exclude plants from patentability at the EPO, the only way for them to do it will now be to amend the European Patent Convention (the EPC) itself. This would require the agreement of all EPC member states (not just a majority of them) and so will be extremely difficult to do.

Final conclusions

This decision is excellent news for those who want to obtain granted patents at the EPO for novel and inventive plant varieties obtained by means of an essentially biological process.

Pleasingly, this decision also reconfirms the independence of the Boards of Appeal and the separation of powers at the EPO, which should boost confidence in the EPO.

[1] Wynne-Jones July 2017 article: July 2017 https://wynne-jones.com/news-events/2017/07/is-new-rule-28-2-epc-unenforceable-plant-patents-at-the-epo-and-exclusions-from-patentability

[2] Wynne-Jones November 2018 article: https://www.wynne-jones.com/news-events/2018/11/first-case-to-go-to-appeal-at-epo-since-new-rule-28-2-epc-was-implemented/

[3] Decision G2/12: http://www.epo.org/law-practice/case-law-appeals/recent/g120002ex1.html

[4] Decision G2/13: http://www.epo.org/law-practice/case-law-appeals/recent/g130002ex1.html

[5] Article 112 EPC: https://www.epo.org/law-practice/legal-texts/html/epc/2016/e/ar112.html

[6] EP12756468.0: https://register.epo.org/application?number=EP12756468&lng=en&tab=main

[7] Wynne-Jones November 2018 article: https://www.wynne-jones.com/news-events/2018/11/first-case-to-go-to-appeal-at-epo-since-new-rule-28-2-epc-was-implemented/

[8] EP2825024: https://register.epo.org/espacenet/regviewer?AP=13708833&CY=EP&LG=en&DB=REG

[9] https://register.epo.org/application?number=EP08761009&lng=en&tab=main

[10] Administrative Council decision CA/D 6/17: https://www.epo.org/law-practice/legal-texts/official-journal/2017/07/a56.html