6 February 2019
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As we reported previously, EPO Technical Board of Appeal 3304 recently ruled that a controversial prohibition at the EPO against the grant of patents for plant-related inventions appears to be invalid. Now, with the release of the full decision, their reasoning is now known and may bring some clarity to those working in this space.

Clarity at last? 

The patentability of plants and animals is an ongoing saga at the EPO, and has been the cause of much confusion over the years. In an attempt to introduce some legal certainty in this area, the Administrative Council of the EPO introduced new Rule 28(2) into the Implementing Regulations of the European Patent Convention (EPC).  That new rule prohibited the grant of patents for plants or animals obtained exclusively by essentially biological processes, such as crossing and selection. As we reported at the time, this was not without controversy, because the rule seemed to run contrary to the Articles of the EPC as interpreted by the Enlarged Boards of Appeal.     

The Board ruled that Rule 28(2) EPC clashed with the EPC and, in the case where there is such a conflict, the Convention prevails over the rules. Unlike in previous cases where Rules have collided with the convention, however, the Board notes that in this case there is no scope for avoiding the conflict through reinterpretation. It therefore appears, at least in the Board’s view, that Rule 28(2) EPC is void, and patents for plants or animals obtained exclusively by essentially biological processes should be allowable under the EPC.

The Board went further still, suggesting that the Administrative Council did not have the authority to introduce Rule in the first place as, by reversing the meaning of the Convention as interpreted by the Enlarged Boards, doing so would represent an amendment of an Article of the Convention (which is only allowed following a vote by the contracting states). The Board therefore believes that there was no legal basis for the introduction of Rule 28(2) in the first place. However, the Board lacks the power to amend the Implementing Regulations and remove it.

What happens next?

As for what happens next, it is too early to tell. As decisions of the Boards of Appeal are binding on departments of first instance, we might expect Examination and opposition divisions to follow this decision to ignore Rule 28(2) EPC. However, it is rare for the Board of Appeal to overrule the Implementing Regulations, and the divisions may be reluctant to follow the Board’s reasoning.  We are expecting the EPO to issue a practice announcement very soon, which we hope will clarify the extent to which Rule 28(2) is to be applied.

Update

On 29 March 2019, EPO president António Campinos expressed his view that a President's referral of the case is justified and necessary. The EPO has said that they will, "endeavour to restore legal certainty fully and speedily in the interest of the users of the European patent system and the general public." Read the full article from the EPO here. 

 
On 14 May 2020, the Enlarged Boards of Appeal of the European Patent Office released their decision in referral G3/19 ahead of publication. Read our blog here.
 
 
This blog was originally written by Andrew Tindall.
Thomas is an Associate and Patent Attorney at Mewburn Ellis. Working in our life sciences team, Thomas drafts and prosecutes patent applications for both local and international clients. He has industrial experience which was gained whilst working for a plant biotechnology company during his undergraduate degree, and also has experience of working in technology transfer at The University of Manchester. Thomas has a BSc and PhD in Biotechnology from the University of Manchester, and has published scientific papers in the areas of metabolic engineering and biofuels.
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