The EPO's Enlarged Board of Appeal (EBA) has today issued its decision on referral G3/19 relating to patent-eligibility of plants obtained by essentially biological processes. This is the latest development in a chain of events and controversies in this area, in which Article 53(b) EPC excludes from patentability “essentially biological” processes for the production of plants by breeding as opposed to biotechnological processes but contrasting Board of Appeal decisions and EPC Rules have at different times led to different outcomes for product claims to the plants obtained by breeding processes. This led last year to the EPO's President referring to the EBA the questions that it has just answered.
The EBA's conclusion is that “the exception to patentability … in Article 53(b) EPC has a negative effect on the allowability of product claims … directed to plants … if the claimed product is exclusively obtained by means of an essentially biological process …”. This aligns with the EPO Administrative Council's implementation of a rule ( Rule 28(2) EPC) to this effect in line with the wishes of many EPC member states but contradicts the more applicant-friendly approach taken by its Boards of Appeal in case law. Plants that are the products of breeding processes are therefore patent-ineligible like the processes themselves.
The EBA's decision is complex but can immediately be seen to be noteworthy in several ways in addition to its effects on applications and patents in the area. First, the EBA has been able to give a decision notwithstanding concerns over the admissibility of the referral in view of a possible lack of the conflict of case law that a presidential referral requires, which has prevented two requested patent-eligibility decisions from being given in the past. Second, adopting a so-called dynamic interpretation of the EPC, the EBA has taken the rare step of reversing its own earlier decisions in the “ Broccoli and Tomatoes II” decisions (G2/13 and G2/12), which has only happened once before. Third, like a handful of EBA decisions before it, the decision is effective only as of a particular date rather than fully retrospectively. The EBA states that the “negative effect” does not apply to patents granted before 1 July 2017, when Rule 28(2) was introduced, or pending applications filed before that date. It is however worth noting that the EBA's decision in this regard will not bind national courts so such claims may not be upheld in litigation in countries opposed to them even if they have a filing date before 1 July 2017.
The prosecution of many European patent applications in this area has been stayed pending this development but will presumably now resume with outcomes based on this cut-off date and earlier ones being allowed but later and future ones having to be amended or abandoned if they contain no other patent-eligible claim types. This decision will of course therefore be disappointing to patent applicants hoping to protect inventions relating to plant germplasm and breeding but may at least offer some improved clarity and enable examination to resume and decisions to be taken on how to proceed, and should not in general impact claims to plants produced by biotechnological processes such transgenesis and gene editing.
Originally published J A Kemp, May 2020
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