As reported recently, the President of the EPO has in the last few days referred questions to the Enlarged Board of Appeal on the controversial issue of patent-eligibility of plants obtained by essentially biological processes. The referral is now pending as case G3/19 but it is uncertain at present whether or not this referral will be admissible in the absence of any clear conflict in the case law on this point. The Enlarged Board could do anything from rejecting the referral entirely to accepting it and reversing its "Broccoli and Tomatoes II" (G2/13 and G2/12) decisions from 2015, in which it held 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. As a reaction, Rule 28(2) EPC was introduced in 2017 and has since then been used to reject claims "in respect of plants or animals exclusively obtained by means of an essentially biological process". In December 2018, EPO Technical Board of Appeal decision T1063/18 then held Rule 28(2) invalid as in conflict with Article 53(b) in light of Broccoli/Tomatoes II. This was then reinforced in case T2734/18. The President's referral is held out as an attempt to clarify the law but in fact seeks to reverse this and demonstrate that Rule 28(2) is valid, such that plants obtained by breeding are not patent-eligible.
The EPO has now issued a notice in which it immediately stays examination of cases whose outcome "depends entirely on the outcome of the Enlarged Board of Appeal's decision". This is a standard practice that allows time for the law to be reviewed without risking depriving applicants of their rights via refusal of applications or the grant of invalid patents. However, as Enlarged Board referrals typically require one or two years to resolve, it also introduces significant delays. Older cases in this area that have already been impacted by earlier similar developments may now be stayed for a second or third time. Appeals are not formally affected by the EPO's notice but it is also likely that no further appeal decisions in line with T1063/18 and T2734/18 will be issued in the meantime.
However, because the issues relate to plants produced by breeding rather than technological means such as transformation or CRISPR/Cas technology, many plant-related cases will be unaffected. Also, even in some cases that are affected, it may be possible to advance prosecution of claims in categories that are not affected by Rule 28(2). Such cases could potentially be granted if the affected claims are excised, in which case it would be possible to file a divisional application to preserve pendency of claims to plants. Applicants should consider this on a case by case basis depending on their business goals.
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