Plant patents at the EPO - is an amended EU Biotech Directive (98/44/EC) on the horizon?

By Jim Robertson - Patent Attorney | Partner

The saga of plant patents at the EPO continues - do recent events at the EPO and the European Commission suggest that there will be an attempt to amend the EU Biotech Directive 98/44/EC?

Following on from our December 2018 article reporting that an EPO Board of Appeal had found that plants are patentable at the EPO (i.e. that Rule 28(2) EPC is unenforceable), there have been two further developments.

• Firstly, on 20 February 2019 the EPO issued a notice stating that the Administrative Council's Committee on Patent Law (CPL) "had a first exchange of views on possible next steps following the recent decision T 1063/18" and that it "supported measures to obtain an opinion from the Enlarged Board of Appeal on the matter.
• Secondly, in a 7 March 2019 answer to a question from MEP Jan Huitema, the European Commission stated that "It also stands ready to engage in discussions on this issue with the European Parliament".

It would be extremely surprising if the EPO's Enlarged Board of Appeal allowed itself to be drawn into this political issue, especially since it has already given its opinion on the legal issue in decisions G2/12  ("Broccoli II") and G2/13  ("Tomatoes II"). In those two decisions, it found that Article 53(b) EPC does not exclude product claims directed to plants or plant material from patentability, even if made by an "essentially biological process" (which itself is excluded from patentability).

What is actually happening?

The fundamental issue here is whether or not Directive 98/44/EC bars the patenting of plants and plant material produced by "essentially biological processes". Many EU governments seem to be clear that they want them excluding from patentability. However, the EPO's Enlarged Board of Appeal has found in decisions G2/12 and G2/13 (above) that the European Patent Convention does not exclude them from patentability.

This limited the options available to the EPO's Administrative Council (i.e. the representatives of EPC contracting states, including all EU member states) and resulted in the seemingly inevitable failure of their attempt to change EPO practice by introducing new Rule 28(2) EPC (see our July 2017 article).

A Dutch court (the Court of Appeal of The Hague in its 28 May 2013 decision in case no.: 200.103.492/01 (Taste of Nature Holding B.V. vs. Cresco Handels B.V.)) found that the products of essentially biological processes for the production of plants are not excluded from patentability by Article 4(1)(b) of Directive 98/44/EC.

This could be resolved if the CJEU issued a decision on this issue. However, we are not aware of any currently pending cases, and there is a very real risk that the CJEU could decide that Directive 98/44/EC does not bar the patenting of plants and plant material produced by "essentially biological processes".

Significance of the recent events

The 20 February notice (above) from the EPO and the European Commission's 7 March answer (above) might signal that we are seeing a coordinated political effort from EU member states via the EPO Administrative Council and the European Parliament. It may be that they are seeking to exhaust all options at the EPO so that the matter can then be presented to the European Parliament as absolutely requiring its attention.

The European Parliament could then move to resolve things by passing a new Directive amending the Biotech Directive (Directive 98/44/EC) (see Joint Practical Guide at 18.6) to bar the patenting in the EU of plants and plant material produced by "essentially biological processes".

What would happen if the European Parliament amended the Biotech Directive?

Article 33(1)(b) EPC allows the Administrative Council to amend the European Patent Convention "... to bring [it] into line with an international treaty relating to patents or European Community legislation relating to patents". This requires the unanimity of all EPC contracting states and no abstentions (Article 35(3) and (4) EPC).

Therefore, once legislation amending Directive 98/44/EC entered into force (and not before - Article 33(5) EPC), the EPO Administrative Council could then use the provisions of Article 33(1)(b) EPC to amend the European Patent Convention itself (rather than amending the Implementing Regulations as it previously did when it introduced new Rule 28(2) EPC).

This would then sidestep the Enlarged Board of Appeal's decisions G2/12 and G2/13 (above), legitimise Rule 28(2) EPC, and block the patenting at the EPO of plants and plant material produced by essentially biological processes.

Conclusions and recommendations

Although amending Directive 98/44/EC and using that as the basis to amend the EPC could take a number of years, it would be a final resolution to the whole issue.

We will now have to wait to see what EU politicians decide to do - will they try to amend Directive 98/44/EC?

For patent applicants, it may well be worth seeking to accelerate prosecution of affected patent applications to try and pre-empt any future changes to the Biotech Directive and the EPC - the EPO President previously suspended prosecution of affected cases, and if EU law is to change then that might be done again.

If you have any questions regarding this then please contact your usual Wynne-Jones attorney.