EPO: Appeal Board vetoes EPC regulation

February 26 2019

In the latest international briefing for the EPO, Jakob Pade Frederiksen looks at the law around the patenting of plant and animal varieties as well as biological processes for the production of plants and animals

Following the so-called Tomato II and Broccoli II decisions rendered by the EPO's Enlarged Board of Appeal (EBA) in 2015, the politically delicate question of patentability of plant or animal varieties as well as essentially biological processes for the production of plants or animals has once again occupied the EPO, now with the uncomfortable implication that a Technical Board of Appeal of the EPO has revealed a conflict between two legal provisions within the framework of the EPC.

The Tomato II and Broccoli II decisions, G 2/12 and G 2/13, held that products derived from essentially biological processes may be patentable, even if the process used to obtain the product is essentially biological and hence not patentable. In particular, the EBA concluded that Article 53(b) EPC, excluding plant or animal varieties and essentially biological processes for the production of plants or animals from patentability, did not extend to plants or plant material or plant parts other than a plant variety.

In the wake of these decisions, the European Commission released a notice in November 2016 stating that the EU legislator's intention when adopting the Biotech Directive (98/44/EC) was to exclude from patentability plants, animals and parts thereof obtained by means of essentially biological processes. Against this background, the Administrative Council of the EPO implemented as of July 1 2017 new Rule 28(2) EPC specifying that under Article 53(b) EPC, "European patents shall not be granted in respect of plants or animals exclusively obtained by means of an essentially biological process."

According to decision T 1063/18 concerning the refusal under Rule 28(2) EPC of EP 2 753 168, made available on February 5 2019, a Technical Board of Appeal of the EPO held that Rule 28(2) EPC is in conflict with Article 53(b) EPC, as interpreted by the EBA in the above-referred decisions. In accordance with Article 164(2) EPC, the Appeal Board held that the provisions of the convention, i.e. Article 53(b) EPC shall prevail. In other words, Rule 28(2) is null and void.

Given the public interest in the matter concerned and the ethical aspects involved, and having regard to political signals from relevant EU bodies, it seems likely that further legislative initiatives may soon be taken in order to resolve the conflict between EU legislators' views and the provisions of Article 53(b) EPC.