UK: EPO Plant Patent-Eligibility Update: Political Pressure Brings Further Uncertainty For Applicants

Last Updated: 11 April 2019
Article by Andrew Bentham

Recent weeks have seen important developments in the debate on patent-eligibility of plants in Europe, with the EPO's Boards of Appeal and its President, Administrative Council and member states pulling in opposite directions. The President has now referred questions, published today, to the Enlarged Board of Appeal, but the admissibility of the referral is uncertain, so it is unclear how or when the Enlarged Board will react. Applicants in this field will therefore face further delay and uncertainty. More generally, this is also a highly unusual, polarised situation that highlights the potential for conflict between different branches of the European patent system. Fortunately, however, this issue only directly affects some plant-related applications, not all that generally relate to plants in some way.

In December 2018 (reported here), EPO Technical Board of Appeal 3.3.04 held Rule 28(2) EPC invalid as it believed it to be in conflict with Article 53(b) EPC. This was confirmed in a reasoned decision in February 2019. Article 53(b) EPC renders patent-ineligible plant and animal varieties and essentially biological processes for the production of plants and animals and has been controversial, resulting in the "Broccoli and Tomatoes II" decisions (G2/13 and G2/12) of the Enlarged Board of Appeal in 2015. These indicated that, although essentially biological processes for the production of plants are patent-ineligible according to Article 53(b) EPC, the products of such processes are not ineligible just because the processes could not be patented. If other conditions such as novelty and non-obviousness were complied with, a plant obtained by breeding could be patented.

In 2016, the European Commission issued a notice that was followed in 2017 by the EPO's Administrative Council via implementation of Rule 28(2) EPC, to the effect that "European patents shall not be granted in respect of plants or animals exclusively obtained by means of an essentially biological process". Although generally not impacting plants obtained by biotechnological means, including techniques such as CRISPR/Cas, this made it almost impossible to obtain a patent to a plant obtained by breeding. Moreover, Rule 28(2) EPC purported to exclude from patentability the same plants that the Enlarged Board had held to be patent-eligible in the Broccoli and Tomatoes II decisions.

The Technical Board of Appeal's decision in case T1063/18 changed this again. The Board found that Rule 28(2) EPC was in conflict with Article 53(b) EPC and hence in breach of Article 164(2) EPC as interpreted by the Enlarged Board in the Broccoli and Tomatoes II decisions. Article 164(2) EPC indicates that, if an Article and a Rule are in conflict, the Article prevails. Notably, the Technical Board also took this step itself rather than referring questions on the matter to the Enlarged Board of Appeal, essentially because there was no ambiguity in the case law and hence no reason to do so. This was within the Board's power at a judicial level, but was always going to be controversial.

Following decision T1063/18, there was a lot of legal commentary and some inevitable protest, but no change for applicants. In our experience, issues in this area were not examined while examiners waited for the written decision to issue, presumably as it is hard for examiners to ignore Rule 28(2) EPC while it is still part of the EPC, even though it has been held invalid. Of course, more political developments were also to follow.

Meantime, the same Board of Appeal that issued T1063/18 has reiterated its position in another case, T2734/18, confirming that it intends to reverse the refusal of an application under Rule 28(2) EPC. It is possible that the Board was sending a message by this action, as its Communication was issued only a few months after the Appeal was filed, whereas it is normally slower to pick cases up. This is in contrast to the latest actions from the EPO's Administrative Council and President. Following discussion at an Administrative Council meeting in March 2019, it was reported that the EPO's relatively new President would himself refer questions to the Enlarged Board of Appeal, then announced on 5 April 2019 that the referral had been made. The President indicated that he "reacts to the concerns expressed by the Contracting States, the user community and representatives of civil society who are worried about legal uncertainty resulting from decision T1063/18" and "seeks the Enlarged Board of Appeal to clarify the applicable legal framework".

The difficulty with this is that, arguably, the legal framework is in fact already clear. Article 53(b) EPC is the basic source of law, the way to interpret it is laid out in the Broccoli and Tomatoes II decisions, and although Article 112(1)(b) EPC permits the President to refer points of law to the Enlarged Board, this is only "where two Boards of Appeal have given different decisions". On the face of it, there are no such different decisions here, and nor is it likely that any will meantime be given, as most or all cases in this area will be handled by the same Board that issued T1063/18.

Before the President's questions were made publicly available, it had already therefore been widely pointed out that the lack of conflicting decisions meant a risk of rejection of the new referral as inadmissible by the Enlarged Board. This has happened twice before on patent-eligibility issues, once relating to presidential questions on plant patent-eligibility (G3/95) and once relating to computer-implemented inventions (G3/08).

The President's letter to the Enlarged Board and accompanying questions have been published today and the referral is now pending as G3/19. The questions read as follows:

  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 (b) EPC which neither explicitly excludes nor explicitly allows said subject-matter?

In the reasoning relating to question 1, the President seeks to circumvent T1063/18 by asserting that its finding that Articles of the EPC must be understood in light of Enlarged Board case law (i.e. the Broccoli/Tomatoes II decisions) such that Rule 28(2) EPC conflicts with Article 53(b) EPC is itself in conflict with other decisions that interpret Article 164(2) differently. The different decisions required by Article 112 EPC are therefore said to be in respect of Article 164(2) EPC rather than Article 53(b) EPC. The President then argues that the question 2 is also admissible because it is related to question 1. No conflicting decisions are cited specifically in relation to question 2, as none exist.

However, the President argues that Article 112(1)(b) EPC should not be interpreted narrowly and that the disparity between the Broccoli/Tomatoes II decisions and Rule 28(2) EPC is analogous to a situation where different decisions have been given. As expected, he also refers to the European Commission notice and other "important legal developments" since the Broccoli/Tomatoes II decisions were issued. Similar arguments based on legal thinking in the EU and in EPC member states are then advanced in support of Rule 28(2) EPC and against the patent-eligibility of plants obtained by breeding.

Enlarged Board referrals and decisions often involve detailed legal issues, but this is a factual matrix even by those standards. It is hard to predict both the admissibility of the questions and how they will be answered if they are admitted. Much may depend on how independent the Enlarged Board of Appeal wants to be of the other branches of the EPO and to what extent it considers the EPC strictly as a stand-alone source of law as opposed to one that sits in a wider European context. It could for example simply answer "no" to question 1 and allow the existing case law to stand, or it could go as far as to answer "yes" to question 1 and go on to revisit the fundamental issues under question 2.

Either way, though, its decision will be important, not only to applicants in this scientific field but at a more general legal level. If reversing the case law by rule-making is rejected in the same way as in T1063/18, a change of the type the President and member states want would then in principle require a change to Article 53(b) EPC itself. This will, however, be hard to achieve as such changes require a diplomatic conference and unanimous agreement from the member states. On the other hand, if it overturns its own previous case law in Broccoli and Tomatoes II, that is also a rare step and could be seen as bowing to political pressure as much as reflecting the development of legal thinking.

It may also be some time before we know how the Enlarged Board will react. Typically, such cases take one to two years and time will need to be allowed for amicus curiae briefs to be filed by interested parties from both sides of the debate. In the meantime, however, experience suggests that the existence of the referral may well lead the EPO to impose a formal stay of prosecution on applications with claims whose allowability under Article 53(b) EPC is in doubt, failing which applicants may be able to request stays if they want them. It is also likely that no new relevant Technical Board decisions will be given while the referral is pending.

For now, we believe that all that applicants in this area can do is to react to developments case by case. In some applications, there may be little choice but to wait and see. In other cases, however, not all claim types may be affected, so it may be possible to advance examination of some claims and hold others in abeyance or file a divisional application to pursue them. Applicants should also continue to appeal any refusals under Rule 28(2) EPC to keep their options open and may even wish to consider filing amicus curiae briefs when the Enlarged Board opens up that option.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions