In an appeal from an Examining Division decision, the Board of Appeal stated that the recently introduced R.28(2) EPC is in conflict with A.53(b) EPC as interpreted in both the Enlarged Board decisions G2/12 and G2/13 ("broccoli II" and "tomatoes II"). The Board held that under A.164(2) EPC the provisions of the convention, i.e. the Articles of the EPC, must prevail. Effectively, the Board indicated that G2/12 and G2/13 should be followed in allowing claims to plants produced by essentially biological processes, and that the contradictory R.28(2) EPC should be considered void.
Case T1063/18 relates to an appeal filed by the applicant Syngenta Participations AG after refusal of European application EP12756468.0 by the Examining Division (ED). The ED refused the application on the basis that the claims were contrary to R.28(2) EPC because they relate to a plant produced by an essentially biological process. The claims covered a blocky fruit type pepper plant of extreme dark green colour defined by having two QTLs and certain physiochemical characteristics.
The applicant appealed, requesting that the decision of the ED on the subject of patentable subject matter under A.53 be set aside and if any other grounds relating to the claims needed to be discussed, that the case then be remitted back to the ED for further prosecution. The applicant argued along three lines: that R.28(2) EPC is in contradiction with Article 53(b) EPC and established case law of the Enlarged Board of Appeal; that the Administrative Council was not acting within its competencies when it amended R.28 EPC; and that the interpretation of the term 'essentially biological process' in R.28(2) should in any case be construed narrowly so as not to include claims having further technical features.
R.28 EPC was amended in 2017 to insert part (2) which states that 'European patents shall not be granted in respect of plants or animals exclusively obtained by means of an essentially biological process'. This part was inserted by the Administrative Council after widespread debate and lobbying in Europe from interested parties, especially from plant breeders' associations, triggered by the G2/12 and G2/13 decisions. A discussion of the background in this long-running dispute leading to the Rule change can be found here: /updates/news/2017/07/crucial-rule-changes-for-the-patentability-of-plants-and-animals-at-the-european-patent-office/.
In summary, G2/12 and G2/13 were landmark G decisions stating that even if claims to an essentially biological process of producing plants are not allowable (G2/07 and G1/08), that this does not preclude claims to a plant product which has been produced by an essentially biological process. Plant breeders felt that this allowed claims to be granted which covered plant varieties which therefore encroached on PVRs and hampered plant breeders' activities. The European Commission was asked to review the matter and subsequently concluded that the Biotech Directive was intended to exclude plants produced by essentially biological processes from patentability. This notice was not binding upon the EPO, but was taken by the Administrative Council as reason to amend R.28 EPC to exclude such plants from patentability (OJ EPO 2017, A56). The new Rule came into force on 1st January 2017. Since its introduction, claims to plants produced by essentially biological processes have either been refused before the EPO, or applicants have been requested to insert a disclaimer explicitly excluding plants produced by essentially biological processes from their claims.
Many in the patent profession and those research organisations that file patent applications to protect development of plant technologies have been dissatisfied with the reasoning behind the Rule change. This is mainly because the Rule change was not initiated by a relevant authority of the EPO such as the CJEU or the Enlarged Board of Appeal. Since 2017 there have been calls for an Enlarged Board of Appeal referral to resolve the conflict between the Articles, G decisions, and the new Rule. The present case included a request for such a referral as its first auxiliary request. However, the Technical Board of Appeal felt able to decide on the matter without referring any questions to the Enlarged Board of Appeal.
In the hearing on the 5th December 2018, which was made public and notably well attended, a five-member Technical Board of Appeal including 3 technical members and 2 legal members were relatively quick to decide that R.28(2) should not be applied and the decision of the ED in this regard should be set aside. The main reasoning seemed to be that R.28(2) is in conflict with A.53(b) and the G decisions G2/12 and G2/13. The Board announced that under A.164(2) EPC the provisions of the convention, i.e. the Articles of the EPC and their interpretation by the Enlarged Boards of Appeal, must prevail. The Board did not particularly consider the other lines of argument presented by the applicant relating to the role of the Administrative Council in the Rule change, or the interpretation of the language of the Rule. There was a general agreement between the members of the Board and the applicant that G2/12 and G2/13 were well reasoned and well researched decisions that should not be deviated from. The Board further commented that they did not find the third-party observations arguing that R.28(2) should be enforced legally convincing.
This is the first decision by a Board of Appeal to ignore R.28(2). It is also a rare occurrence of a Board of Appeal overruling the implementing regulations of the EPC. It is a decision that will be welcomed by many applicants before the EPO. The question remains as to how it will be taken into account by examiners looking at claims to plant products. Examiners could ignore this T decision and choose to carry on observing R.28(2) EPC, however this will create many more appeals citing the present decision. It seems that there are no other appeals pending on the matter of R.28(2) EPC, however the recent revocation of a Bayer patent EP1597965 in opposition proceedings (http://patentblog.kluweriplaw.com/2018/11/16/epo-revokes-bayer-broccoli-patent/) for the same reasoning seems a likely candidate for such an appeal. It may be that other Boards in the future will decide the same issue differently. This would create diverging case law; an ideal scenario for the sought after referral to the Enlarged Board of Appeal.
Many parties will be following this area closely for any further developments. A second T decision citing and supporting the present decision would provide more security for applicants. However, at least for now, the situation seems cautiously promising for those applicants in the AgBio sector.
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