EPO does a U-turn on plants produced by “Essentially biological processes”
The Enlarged Board of Appeal, the highest judicial authority at the European Patent Office (EPO), has controversially reversed its earlier decision by stating that plants obtained by means of an essentially biological process are not patentable at the EPO. This is likely to be a major setback to the Agritech community. See the full decision here.
It is well established at the EPO that method claims directed to essentially biological processes for the production of plants or animals are not patentable (Article 53(c) EPC). However, the patentability of plants and animals obtained by such methods has been uncertain for many years.
In 2015 the Enlarged Board of Appeal ruled that plant and animal products exclusively obtained by means of essentially biological processes are patentable (G2/12 and G2/13, often referred to as “Broccoli/Tomatoes II”).
However, on 1 July 2017 the Administrative Council of the EPO amended Rule 28 EPC to state that “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”. This amendment, which directly contradicts the decision of the Enlarged Board of Appeal, followed significant pressure from some EPC member states and political groups. This resulted in an unsatisfactory conflict between the case law and the Rules.
This issue was then considered by the Technical Boards of Appeal in case T 1063/18. They resolved the conflict by stating that the Articles of the EPC, as interpreted by the Enlarged Board of Appeal in G2/12 and G2/13, must prevail over the Rules, so the new Rule 28(2) EPC must be considered void. The Board held that a referral to the Enlarged Board of Appeal on this point was not justified.
Nevertheless, the President of the EPO felt that further clarification was needed and made a referral to the Enlarged Board of Appeal, leading to the decision now under discussion (G3/19, also referred to as “Peppers”)
On 14 May 2020, the Enlarged Board of Appeal found the referral of the president to be admissible and ruled that Article 53(c) EPC in combination with the new Rule 28(2) EPC excludes animals, plants, and plant materials exclusively obtained by essentially biological processes from patentability. Thus, product claims and product-by-process claims directed to such plants and animals are not patentable.
Importantly, this decision only applies to European patents granted after 1 July 2017 or applications that have a filing or priority date after 1 July 2017.
Many European patent practitioners will be surprised that the referral was found to be admissible as the circumstances of the case did not clearly fall under the criteria for a justified referral to the Enlarged Board of Appeal. The Enlarged Board provided detailed reasoning regarding admissibility. Ultimately, the Board apparently felt it was necessary for them to decide on this issue in keeping with their overall purpose to establish uniformity of law and legal certainty in the European patent system. Notably, the Enlarged Board re-worded the questions referred by the president to reflect what they felt was the referral’s “true object” before deeming the appeal admissible. This is likely to have implications for the admissibility of future referrals.
Implications for applicants
Examination and opposition proceedings that had been stayed pending the outcome of this decision will now gradually be restarted.
The decision will undoubtedly be a blow to some Agritech applicants. There is also likely to be some confusion as patents or applications having similar subject-matter will be treated differently depending on their grant date or effective filing date. On the positive side, the decision does not preclude the patentability of genetically modified, e.g. transgenic, plants.
If you have any questions about how this decision will impact you, please contact your usual Forresters attorney.