“Rule 28(2) EPC is in conflict with Article 53(b) EPC, as interpreted by the Enlarged Board of Appeal in decisions G 2/12 and G 2/13. In accordance with Article 164(2) EPC, the provisions of the Convention prevail.”
Briefly summarized, in T 1063/18, the TBA draws the following conclusions:
Plants and animals exclusively obtained by means of an essentially biological process can generally be patentable, when the other requirements of the European Patent Convention (EPC) are fulfilled.
Rule 28(2) EPC which generally denies patentability of such plants and animals is declared not applicable.
The Enlarged Board of Appeal (EBA) of the EPO is only bound to the Articles, but not to the Implementation Regulations of the EPC. The EBA has the power to decide that Rules of the Implementation Regulations of the EPC contravene against the Convention. In this case, the provisions of the Convention prevail and Rules can be overruled (Article 164(2) EPC).
Decisions once made by the EBA even overrule future amendments to the Implementing Regulations. The Administrative Council of the EPO as legislator is powerless when there is a conflict with the EBA.
Potential Future Controversies
Article 53(b) EPC generally excludes plant or animal varieties from patentability. T 1063/18 unfortunately did not address the question on how to interpret the term “plant or animal varieties”. In particular, the decision does not define criteria for distinguishing plant or animal varieties from other plants or animals and populations which are selected for a number of certain properties.
Unfortunately, there was no referral of the legal issues decision T 1063/18 to the EBA. It will be interesting to see whether other TBAs will follow this decision or whether there will be controversial results. In the latter case, it seems be likely that the above issues are referred to the EBA for clarification.
As far as it is confirmed that the EBA can overrule the Implementing Regulations, it is an interesting question whether lower instances (TBAs) can overrule the Implementing Regulations. This would mean that the Administrative Council (i.e., the legislator of the Implementing Regulations) would at least partly lose its legislative power.
Further, it will be interesting to see how the Administrative Council will react on the decision T 1063/18. According to a notice of the EPO, representatives of the EPO member states already discuss further options in this matter.
The application underlying T 1063/18 is remitted to the Examining Division for further prosecution. We will see how inventive step is assessed for claims with essentially biological procedural steps.
For Applicants interested in plant or animal patents, this decision is a signal for hope that also plants and animals obtained by biological means can be broadly protected. On the other hand, several NGOs already pointed to unpredictable risks for important nutritional bases.
Article 53(b) EPC generally excludes “plant or animal varieties or essentially biological processes for the production of plants or animals” from patent protection and is related to EU Directive 98/44/EC. Due to the wording that literally excludes two alternatives from patentability, there was a controversial discussion whether this legal norm is to be interpreted literally or with a teleological interpretation. In particular, it was discussed whether product-by-process claims for plants or animals obtainable from exclusively biological process steps should be patentable.
This discussion seemed settled several years before Rule 28(2) EPC was implemented by the decisions G 2/12 and G 2/13. Briefly summarized, in decisions G 2/12 and G 2/13, it was decided that Article 53(b) EPC is to be interpreted restrictively. The EBA concluded that product-by-process claims which refer to plants or animals obtainable from exclusively biological process steps can generally be patentable.
In several countries the political desire to generally exclude biological plants and animal from patentability was articulated and in 2017 the Administrative Council of the EPO, established Rule 28(2) EPC:
“Under Article 53(b), European patents shall not be granted in respect of plants or animals exclusively obtained by means of an essentially biological process.”
The pendulum seemed to have swung to the other direction. Once again, the issue of plant and animal patents seemed to be settled. It was widely assumed that plants or animals exclusively obtained by means of an essentially biological process are not patentable any longer.
Now, the decision T 1063/18 will open discussion again. The issue remains thrilling.