Yet another referral to the Enlarged Board of Appeal upon to be planted

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In addition to the cases concerning double patenting, computer-implemented simulation and the location in Haar, there is yet another referral to the Enlarged Board of Appeal (EBoA) in the pipeline, i.e. concerning patentability of plants exclusively obtained by an essentially biological process.

In case T 1063/18, an Examining Division had refused the European patent application no. 12 756 468.0 (publication no. EP 2 753 168) for the sole reason that plants exclusively obtained by means of an essentially biological process fall within the exception to patentability according to Article 53(b) and Rule 28(2) EPC. However, Board of Appeal (BoA) 3.3.04, in an enlarged composition consisting of three technically and two legally qualified members, decided that Rule 28(2) EPC (see OJ 2017, A56) was in conflict with Article 53(b) EPC as interpreted by the EBoA in decisions G 2/12 and G 2/13. In these decisions, the EBoA had concluded that the exclusion of essentially biological processes for the production of plants in Article 53(b) EPC did not preclude the allowability of a product claim directed to plants or plant material.

Moreover, BoA 3.3.04 held that Rule 28(2) EPC could not be interpreted in such a way that it was not in conflict with Article 53(b) EPC as interpreted by the EBoA. The board also saw no reason to deviate from the interpretation of the EBoA. Thus, in view of Article 164(2) EPC, the provisions of the Convention prevail.

Now, how to resolve this clash of an Article as interpreted by the EBoA on the one hand, and a Rule and the political will on the other hand?

That’s what this referral is all about. According to a news alert on the EPO website, the President of the EPO expressed his view at the 159th meeting of the Administrative Council on 27/28 March 2019 as follows:

[…] that a President’s referral of the case to the Enlarged Board of Appeal is justified and necessary. The aim is to obtain an opinion from the Enlarged Board of Appeal on the patentability of plants exclusively obtained by essentially biological processes, hereby considering recent legal developments (interpretations and statements of the European Commission, the EU Council, European Parliament and EPO’s Administrative Council on the interpretation of the European Patent Convention and the EU Bio-Directive, all of them concluding that there should be no patentability in these cases).

The President’s proposal apparently received broad and overwhelming support from almost all Contracting States, and President António Campinos announced that the EPO will proceed swiftly to submit the referral.

It will be highly interesting to see how the EBoA deals with this referral, in light of what Art. 112(2) EPC requires, i.e.

[…] a point of law […] where two Boards of Appeal have given different decisions on that question.

I will report again when the referral is available; stay tuned …

UPDATE 3 April 2019:

The Chartered Institute of Patent Attorneys (CIPA) has issued a position paper on this issue on 25 March 2019, which is well worth reading and to the point.

UPDATE 9 April 2019:

The President’s questions referred to the Enlarged Board of Appeal are now available; see here. Here they are:

    1. Having regard to Article 164(2) EPC, can the meaning and scope of Article 53 EPC be clarified in the Implementing Regulations to the EPC without this clarification being a priori limited by the interpretation of said Article given in an earlier decision of the Boards of Appeal or the Enlarged Board of Appeal?
    2. If the answer to question 1 is yes, is the exclusion from patentability of plants and animals exclusively obtained by means of an essentially biological process pursuant to Rule 28(2) EPC in conformity with Article 53(b) EPC which neither explicitly excludes nor explicitly allows said subject-matter?

The official case no. is G 3/19.

Reported by Martin WILMING

EPO NEWS ALERT

from the 159th meeting of the Administrative Council

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T 1063/18

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