It is reported that, at a hearing on Wednesday 5 December 2018, the EPO Technical Board of Appeal 3.3.04 in the case T1063/18 (Syngenta's Pepper Plant Application No. EP-A-2753168) decided that Rule 28(2) of the European Patent Convention (EPC) is incompatible with Article 53(b) EPC and hence unenforceable. Rule 28(2), which bars the patenting of "plants and animals exclusively obtained by means of an essentially biological process", was introduced in 2017; intending to reverse earlier case law, to reflect the European Commission's position and some national policy positions against the patenting of naturally bred plants and plant parts in Europe in order to preserve the primacy of the plant variety rights (PVR) system.

Syngenta's claim was to a blocky fruit type pepper plant bearing extreme dark green fruit, and specified certain responsible genetic characteristics of the plant. The claim had been refused by the Examining Division, citing Rule 28(2) as an inherent bar to patentability of that subject-matter irrespective of any considerations of inventiveness over the prior art. In particular, the Examining Division pointed out that the only production means provided as a sufficient (enabling) teaching in the application was an essentially biological process. The Examining Division also pointed out that it must follow the law as set out in the EPC, and its Rules and it has no power to question the basis for that law.

By holding that Rule 28(2) be ultra vires, the Board of Appeal was able to set the Examining Division's refusal aside, meaning that Syngenta's application is once again pending. The issues of clarity and inventive step had not been addressed in the decision of the Examining Division and so the Board exercised its discretion to remit the case back to the Examining Division for further examination.

As is normal in the EPO, the decision of the Board of Appeal was delivered orally at the hearing but without detailed reasoning. The full written decision of the Board of Appeal is expected to be issued within the next 2 months. A practice announcement is also eagerly awaited from the EPO to clarify the extent to which Rule 28(2) will now be applied by the Examining and Opposition Divisions.

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