European Union: President's Referral To Enlarged Board Of Appeal - Patentability Of Plants And Plant Products

Last Updated: 10 May 2019
Article by Matthew Handley

The President of the European Patent Office (EPO) has submitted questions to the Enlarged Board of Appeal (EBA) which relate to the patentability of plants exclusively obtained by essentially biological processes and to T1063/18, a Technical Board of Appeal decision of December 2018.

In T1063/18, the Appeal Board disregarded an amendment to Rule 28(2) EPC, thereby undoing what was effectively an amendment to the Implementing Regulations to the Convention on the Grant of European Patents initiated by the European Union (EU). This decision has been widely seen as underlining the independence of the EPO's Boards of Appeal from the EU, an important and timely reminder for everyone grappling with the impact of Brexit on IP in Europe.

The President's decision to refer the matter to the EBA is highly controversial and has been widely criticised. The referral is described by the President as being necessary to restore legal certainty, but commentators have argued that rather than alleviating uncertainty, the President is adding to it by asking the EBA to revisit a question that they have already considered.

The decision issued in T1063/18 was an appeal against an Examining Division objection under amended Rule 28(2) EPC. The amendment to Rule 28(2) EPC was deemed void and the application, relating to pepper plants with improved nutritional value, was remitted to the Examining Division for further prosecution.

The President's EBA referral represents the latest twist in a long running legal and political saga concerning the patentability of plant products produced by essentially biological processes.

In 1999 the EPO implemented the "Biotech" Directive (Directive 98/44/EC of the European Parliament and of the Council of 6 July 1998 on the legal protection of biotechnological inventions), with the purpose of harmonising national law on the patentability of inventions relating to biological material.

As a result of the Biotech Directive, essentially biological processes for producing plants and animals are excluded from patentability, and this is implemented by Article 53(b) EPC. A process for the production of plants and animals is considered to be essentially biological if it consists entirely of natural phenomena such as crossing or selection. However, biotechnological methods of producing transgenic plants and tools such as genetic markers for use in such methods can be patented.

The exclusions to patentability provided by the Biotech Directive have been confirmed by numerous decisions of the EPO Boards of Appeal, for example, in the related cases Broccoli II (G2/13) and Tomato II (G2/12). In G2/12 and G2/13 it was found that Article 53(b) EPC should be interpreted narrowly and should not prevent the grant of patent claims directed to plants or plant products produced by essentially biological processes.

In G2/13 and G2/12, the EBA referred to the official background documents for the negotiation leading to the EPC in 1973, which indicated that exclusions from the general principle of patentability must be narrowly interpreted. In view of this, the Enlarged Board decided that claims to products derived from an essentially biological process are not excluded from patentability, even if the process used to obtain the products is essentially biological and thus not patentable.

However, these decisions of the EBA were not received favourably by some groups, especially plant breeders' associations.

Having come under pressure from such lobbying groups, and certain national governments, to limit the extent of patent protection available in this area, in December 2015, the European Parliament adopted a resolution asking the European Commission to review the patentability of products of essentially biological processes.

This resulted, in November 2016, in the Commission adopting a Notice on certain articles of the Biotech Directive (Notice 2016/C 411/03). In the Notice it was considered that in trying to assess the intentions of the EU legislator when adopting the Directive, the relevant preparatory work to be taken into consideration was not the work which preceded the signature of the EPC in 1973, but that which relates to the adoption of the Biotech Directive. The European Commission concluded that the EU legislator's intention when adopting the Biotech Directive was to exclude from patentability products that are obtained by means of essentially biological processes. Thus, the rulings in G2/13 and G2/12 by the EPO's EBA to allow claims to products obtained from an essentially biological process were considered contrary to the intentions of the Biotech Directive.

The Commission's Notice was highly controversial, and although it was not binding on the EPO, Decision (CA/D 6/17) was issued by the EPO's Administrative Council to amend Rules 27(b) and 28(2) EPC in light of the Notice. Rule 28(2) EPC was thus amended to state that European patents shall not be granted in respect of plants or animals exclusively obtained by means of an essentially biological process. The Decision to amend Rule 28(2) EPC was unprecedented because it was in direct contradiction to the previous decisions of the EBA.

Indeed, in the written decision of T1063/18, the Appeal Board clearly states that the amendment to Rule 28(2) EPC reverses the meaning of Article 53(b) EPC, as interpreted by the EBA, and it is not possible to interpret Rule 28(2) EPC in such a way that no contradiction exists. According to Article 164(2) EPC, in case of conflict the Articles prevail, thus rendering the amendment to Rule 28(2) EPC void.

The Appeal Board also found that the interpretation of the Biotech Directive as put forward in the Notice had not been confirmed in a legally binding way. Specifically, the Board highlighted that within the legal framework of the European Union (EU), only the Court of Justice of the European Union (CJEU) was competent to issue a binding interpretation of the Biotech Directive. This point was specifically recognised in the Notice itself, and since the CJEU has not decided on the matter the Notice does not have any legal authority.

The Appeal Board also addressed the question of whether an interpretation of Article 53(b) EPC, different from that given in decisions G 2/12 and G 2/13, is necessary in view of Article 31(3)(a) of the Vienna Convention. This was not found to be necessary, however. The Appeal Board found that such an interpretation would imply the amendment of an Article of the EPC by the Administrative Council (i.e. Art. 53(b) EPC), but this is beyond the competency of the Administrative Council, which has the authority to amend the Implementing Regulations, but not the Articles, of the EPC.

For these reasons, the Board found that it was not necessary to deviate from the interpretation of Article 53(b) EPC given by the EBA in decisions G 2/12 and G 2/13, and in addition, a referral to the EBA was also unnecessary.

Nevertheless, at a recent meeting of the Administrative Council, the EPO President, António Campinos, discussed the possibility of referring T1063/18 to the Enlarged Board of Appeal, arguing that the referral was "justified and necessary".

Prior to the publication of the President's referral, commentators were quick to question its admissibility. According to Article 112 EPC "the President of the European Patent Office may refer a point of law to the Enlarged Board of Appeal where two Boards of Appeal have given different decisions on that question". However, there have not been two conflicting Boards of Appeal decisions on the question of the patentability of plant products produced by essentially biological processes.

CIPA, the professional body for patent attorneys in the United Kingdom, issued a position paper on the issue, arguing that there are no valid grounds for the EBA to accept another referral on the interpretation of Article 53(b) EPC in the absence of conflicting decisions.

Nevertheless, the President has referred two questions to the EBA:

  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 President argued that Question 1 is admissible on the basis that T1063/18 is in conflict with previous decisions on how to resolve a conflict between the interpretation of an Article by the EBA (or BA) and a subsequent interpretation of the same Article by the Administrative Council.

In relation to the admissibility of Question 2, the President argued that a conflict between a Rule and a single BA decision is equivalent to a situation where two Appeal Boards have given different decisions.

This argument presupposes that Rule 28(2) EPC is in conflict with only a single Appeal Board decision (T1063/18). However, as stated by the BA in T1063/18, Rule 28(2) EPC in fact conflicts with a number of decisions of the EBA, which is the EPO's highest judicial authority. Indeed, many commentators believe that the legal situation was made clear by the EBA in G 2/12, that plants produced by essentially biological processes are patentable.

It is expected that the referral will either be deemed inadmissible, or that the EBA will consider the questions, only to reiterate their previous view, that plants produced by essentially biological processes are patentable under Article 53(c) EPC.

Nevertheless, the decision of T1063/18 was very warmly received by applicants in this field and news of the President's referral will be of concern to companies that filed European patent applications based on the G2/12 and G2/13 decisions, and generally to patent applicants in the European agricultural sector. In the meantime, however, the EPO has returned to granting patents in respect of plants or animals exclusively obtained by means of an essentially biological process. It is also worth emphasising that plants and plant material obtained by a technical process are unquestionably patentable.

It is not clear when the EBA will decide on the President's referral, but in the meantime it is worth noting that the decision in T1063/18, and the President's subsequent referral to the EPO's Enlarged Board of Appeal, sends a clear signal that it is the EPO's Appeal Boards that decide how to interpret the European Patent Convention for the purpose of granting patents, and not the EU or individual national governments.

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

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

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
Font Size:
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 (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

To Use 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.


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.


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