14 May 2020
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On 14 May 2020, the Enlarged Boards of Appeal of the European Patent Office released their decision in referral G3/19 ahead of publication.

This referral related to the patentability of plants and animals at the EPO. This has been a subject of significant legal debate over the years, with several referrals to the Enlarged Boards.

History of patentability of “essentially biological processes”

Under Article 53(b) EPC, European patents shall not be granted in respect of plant or animal varieties, or essentially biological processes (such as crossing or selection) for the production of plants or animals. As interpreted by the Enlarged Boards in decisions G 2/12 and G 2/13, this prohibition did not extend to products that are exclusively obtained by means of an essentially biological process. However, there were concerns that this interpretation conflicted with the Biotech Directive of the European Union – an agreement which is binding on the EPO and many contracting states of the EPC.

In an attempt to resolve some of this tension, new Rule 28(2) EPC, as introduced 1 July 2017, prohibited the grant of patents for plants or animals obtained exclusively by essentially biological processes, such as crossing and selection. This effectively prohibits plants produced through non-GM methods from patentability. Many viewed this change in the rules as controversial.  The Technical Boards of Appeal articulated this concern in decision T 1063/18 (“Pepper”), ruling that the change in the rules was incompatible with Article 53(b) EPC as interpreted by the Enlarged Boards of Appeal in decisions G 2/12 and G 2/13. As the Rules are subservient to the Articles, this meant that Rule 28(2) EPC should be ignored.

This left applicants unclear as to what extent Rule 28(2) EPC applied, if at all. In response, EPO president António Campinos took the unprecedented step of referring this question to the Enlarged Board.

G3/19: First Impressions

The Enlarged Board allowed the referral, and found that new Rule 28(2) EPC “allowed and indeed called for a dynamic interpretation of Article 53(b) EPC”, allowing a departure from the earlier reasoning in decisions G 2/12 and G 2/13. Instead, for all patents and applications filed after the introduction of new Rule 28(2) EPC on 1 July 2017, Article 53(b) EPC is to be interpreted to exclude from patentability plants, plant material or animals, if the claimed product is exclusively obtained by means of an essentially biological process or if the claimed process features define an essentially biological process. However, the new interpretation of Article 53(b) EPC given in G 3/19 has no retroactive effect on European patents granted or applications filed before 1 July 2017 that contain such claims.

In other words, claims to plants that are exclusively obtained by means of an essentially biological process are prohibited for all applications filed after 1 July 2017.

What happens next?

We wrote at the time of the referral of the need for legal certainty when it comes to plant related inventions, and many hoped that this decision would provide patentees with clear guidance. It appears that this is the case, as the Board’s decision is binding with no further appeal possible. Some users may be sceptical that the rules (or at least the Articles) have been somewhat bent to accommodate the president’s desire to exclude this subject-matter from patentability. Others may be surprised to find that applications pending from prior to the rules change in 1 July 2017 have become key parts of their portfolio seemingly overnight. Regardless, this decision provides some welcome clarity on the patentability of plant-related inventions, even if many will be disappointed by its outcome.

Andrew is an Associate and Patent Attorney at Mewburn Ellis. Working in our life sciences team, Andrew is experienced in drafting and prosecuting patent applications for local and international clients. Primarily, he works with clients who are early innovators in their fields, such as universities and start-ups, and his work covers a range of technical areas. He also has extensive experience with Freedom to Operate (FTO) projects where, in addition to providing infringement opinions and patent landscape analysis, he coordinates teams handling larger projects for multinational organisations.
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