By Edward Rainsford 

 

Last year the Administrative Counsel of the EPO changed the EPC Implementing Regulations to provide that products of essentially biological processes should not be patentable. Now, a Technical Board of Appeal has held that the new rule is void, that the Administrative Council can only change the rules of the EPC in such a way as to be consistent with the Board of Appeals interpretation of the articles of the EPC, and that the earlier rulings of the Enlarged Board of Appeal on the subject are the only binding law.

 

On 5 December 2018, the Technical Board of Appeal gave its decision in case T 1063/18. This case was an appeal from the EPO Examination Division against the refusal of patent application EP2753168.

 

The patent application in question relates to the protection of a pepper plant. The Examination Division refused this application based on Rule 28(2) EPC which states that the product of an essentially biological process, i.e. the pepper plant, is not patentable.

 

The wording of Rule 28(2) EPC regarding the exclusion from patentability of products from essentially biological processes was introduced in 2017. The introduction of this wording was made by the Administrative Council of the EPO in response to the consolidated decisions of G2/12 and G3/12 in which the EPO Enlarged Board of Appeal stated:

 

"the exclusion of essentially biological processes for the production of plants in Article 53(b) EPC does not have a negative effect on the allowability of a product claim directed to plants or plant material such as plant parts."

 

In November 2016, the European Commission, which is the body responsible for drafting the Biotechnology Directive 98/44/EC, issued a contrary opinion stating that it was never the intention to allow such product claims to be allowable. This prompted the EPO to suspend examination and opposition proceedings for applications relating to plants and animals obtained from essentially biological processes until the matter had been reviewed by the EPO Administrative Council. The Administrative Council came to the conclusion that products of essentially biological processes should not be patentable and amended Rule 28(2) EPC to specifically exclude from patentability plants and animals exclusively obtained by essentially biological breeding process.

 

If the Administrative Council were of the opinion that they had effectively nullified the decision of the Enlarged Board of Appeal, then this was dealt a blow by the decision in appeal T 1063/18. The Technical Board of Appeal came to the conclusion that Article 164(2) EPC states that the articles of the European Patent Convention take precedence over the rules, and that the Enlarged Board of Appeals interpretation of Article 53(b) EPC in G2/12 and G3/12 must be taken to be the primary guidance on what is or is not patentable. Therefore, the board held that Rule 28(2) EPC, as amended, cannot be compliant with the interpretation of Article 53(b) EPC and must be void and unenforceable.

 

This is unlikely to be the end of this matter and we await a response from the EPO Administrative Council.

 

You can find this article and others in our Patent Issues Newsletter Spring 2019.