“The EPO Enlarged Board of Appeal said the exclusion in Rule 28(2) is ‘not incompatible with the wording of Article 53(b)’ and the exception in Article 53(b) ‘is to be understood and applied as extending to products exclusively obtained by means of an essentially biological process or if the claimed process feature defines an essentially biological process.’”
The Enlarged Board of Appeal (EBA) of the European Patent Office published opinion G 3/19 “Pepper” on Thursday, May 14, holding that plants and animals exclusively obtained by means of an essentially biological process are excluded from patentability. The opinion, which arose via a referral from the EPO President, also set out principles regarding the interpretation of the European Patent Convention (EPC) that could apply in other technical fields.
This is the sixth case in which the EBA has considered questions regarding the exceptions to patentability in Article 53(b) of the EPC, which states that European patents shall not be granted in respect of “plant or animal varieties or essentially biological processes for the production of plants or animals.”
The particular questions in this case arose from Rule 28(2), a new paragraph introduced into the Implementing Regulations by the EPO’s Administrative Council, which came into force on July 1, 2017. Rule 28(2) was supported by 35 of the 38 EPO Contracting States, with just one voting against, and states: “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” (emphasis added). Rule 28(2) was adopted to align the EPC with the EU Biotech Directive.
The Pepper case arose from a European patent application filed by Syngenta Participations AG for “New pepper plants and fruits with improved nutritional value.” In December 2018, the Technical Board of Appeal (Case T 1063/18) found that Rule 28(2) was in conflict with Article 53(b) as interpreted by two earlier EBA decisions (G 2/12 “Tomatoes II” and G 2/13 “Broccoli II”). These two decisions, which pre-dated the introduction of Rule 28(2), found that the non-patentability of essentially biological processes for the production of plants or animals did not extend to products exclusively obtained by means of an essentially biological process.
Plant or animal products obtained by essentially biological processes are excluded from patentability in 10 of the 38 EPO Contracting States, and similar exclusions are planned in some other states.
The Technical Board’s decision prompted the President to refer two questions to the EBA in April 2019. As the referral came from the President, the patent applicant was not a party before the Board and there were no oral proceedings. However, the Board did take account of 41 amicus curiae briefs from a wide range of companies, law firms and organizations.
The two questions addressed essentially: (1) the scope of the Administrative Council’s power to adopt/amend Rules that give a different interpretation of the EPC compared to earlier EBA decisions; and (2) the proper interpretation of Article 53(b) following the adoption of Rule 28(2).
In its opinion, the seven-member Enlarged Board re-phrased and combined the two questions, as it found them “too general and unspecific.” Instead, it asked whether the exception in Article 53(b) could “have a negative effect on the allowability of product claims or product-by-process claims directed to plants, plant material or animals, if the claimed product is exclusively obtained by means of an essentially biological process or if the claimed process feature define an essentially biological process.”
The EBA concluded that the issues underlying the referral concern a point of law of fundamental importance which requires a uniform application, and that the question whether an amendment to the Implementing Regulations can have an impact on the interpretation of an Article of the EPC is one on which two Boards of Appeal have given different decisions.
Turning to the substance, the EBA said that neither a grammatical, systematic or teleological reading of Article 53(b) was satisfactory. Rather, it favoured a “dynamic interpretation” of the EPC, thereby rejecting the notion that decision G 2/12 had settled the Article 53(b) issue “once and for all.” The Enlarged Board said the Technical Board’s notion that G2 2/12 represented a definitive interpretation was “too strict” and added: “A particular interpretation which has been given to a legal provision can never be taken as carved in stone, because the meaning of the provisions may change or evolve over time.”
The Enlarged Board said it cannot now ignore the decision to introduce paragraph 2 into Rule 28 when interpreting Article 53(b), and it rejected arguments in certain amicus submissions that it could disregard the adoption of Rule 28(2).
As a result, the Enlarged Board endorsed the conclusions in the G 2/12 case but noted that Rule 28(2) meant that “the legal and factual situation underlying decision G 2/12 has substantially changed.” The exclusion in Rule 28(2) is “not incompatible with the wording of Article 53(b)” and the exception in Article 53(b) “is to be understood and applied as extending to products exclusively obtained by means of an essentially biological process or if the claimed process feature defines an essentially biological process.”
However, to ensure legal certainty, this new interpretation has no effect on European patents granted before July 1, 2017 or pending applications filed before that date.
Greater Legal Certainty?
EPO President António Campinos said in a statement: “I strongly welcome the opinion of the Enlarged Board of Appeal. It will bring greater legal certainty for patent applicants, and the general public, on what is a sensitive and complex issue that has legal, societal and economic implications.” The Office will implement the opinion’s guidance in examination practice, and proceedings that were stayed while the referral was pending will be resumed.
According to the opinion, there are 18 appeals pending against decisions based on Rule 28(2) at the EPO, as well as about 250 examination and seven opposition cases in which its application could be decisive.
The opinion was welcomed by No Patents on Seeds!, which represents charities and campaign groups. Martha Mertens of Friends of the Earth Germany said: “For more than ten years we have been fighting against patents such as those on broccoli, tomatoes, peppers, melons and cereals. Therefore, we welcome this verdict in the name of the European public, gardeners, farmers and consumers. Knowledge of methods of breeding plants and animals continues to evolve as a common good from the activities of farmers and breeders over centuries, it is not invented by industry. In future, conventionally bred plants and animals have to be kept available for further breeding.”
Sygnenta was invited to comment for this article but did not immediately respond.
Comments on social media highlighted the fact that the opinion brings the EPO into line with the EU Biotech Directive, and also raised concerns about the possibility of the Administrative Council making clarifications to other Articles of the EPC in future:
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