Of Molecules & Medicine: G3/19 – Peppers, Politics, and Non-Patentability

By Joanna Rowley, Associate

In a controversial departure from its earlier decision “Broccoli/Tomatoes II” and a blow to Applicants in the field of agritech, the Enlarged Board of Appeal in “Peppers” holds that plants and animals exclusively obtained by means of an essentially biological process are not patentable at the EPO through applications filed on/after 1 July 2017.

Background

In 2015 the Enlarged Board of Appeal ruled that plant and animal products exclusively obtained by means of such essentially biological processes are patentable (G2/12 and G2/13, often referred to as “Broccoli/Tomatoes II”). However, on 1 July 2017, under significant pressure from certain member states and political groups, the Administrative Council of the EPO amended Rule 28 EPC to introduce Rule 28(2) EPC, stating “Under Article 53(b), European patents shall not be granted in respect of plants or animals exclusively obtained by means of an essentially biological process” (emphasis added).

As many practitioners had anticipated, the first Board of Appeal to consider the interpretation of Rule 28(2) EPC held that the Articles of the EPC as interpreted by the Enlarged Board of Appeal in G2/12 and G2/13 must prevail over the Rules and, hence, Rule 28(2) EPC must be considered void (T 1063/18). The Board considered the law on this issue to be clear and held that a referral to the Enlarged Board of Appeal was not justified.

Nevertheless, the President of the EPO, António Campinos, felt that further clarification was needed and made a referral to the Enlarged Board of Appeal. Most commentators expected the referral to be deemed inadmissible and, even if it were admissible, expected Rule 28(2) EPC to be deemed void.

For further background information on the referral, please see our previous blog post here.

G3/19 “Peppers”

In a surprising turn of events, the Enlarged Board found the referral to be admissible and considered that interpretation that Article 53(c) EPC in combination with Rule 28(2) EPC excludes animals and plants produced by essentially biological processes from patentability (the full text of the opinion can be found here).

Admissibility

According to Article 112(1)(b) EPC, the President may refer a point of law to the Enlarged Board of Appeal where two Boards of Appeal have given different decisions on that question. Since T 1063/18 was the only Board of Appeal decision to have considered the apparent conflict between Article 53(b) EPC and Rule 28(2) EPC, many felt the requirements of Article 112(1)(b) EPC had not been met. However, the Enlarged Board considered that two Boards of Appeal had given different decisions on the broader question of whether an amendment to the Implementing Regulations can have an impact on the interpretation of an Article of the EPC. Thus, the appeal was deemed admissible.

Notably, the Enlarged Board only considered the referral admissible after rephrasing the President’s questions to reflect their understanding of the referral’s “true object”. The Board’s rephrased questions were as follows:

i) With regard to the exception to patentability of “essentially biological processes for the production of plants and animals”, does Article 53(b) EPC permit only a single interpretation or could it bear a wider scope of interpretation?

ii) Does Article 53(b) EPC allow a dynamic interpretation in the sense that its meaning may change over time?

iii) And if so, can an amendment to the Implementing Regulations give effect to a change of meaning resulting from a dynamic interpretation of Article 53(c) EPC?

Interpretation of Article 53(b) EPC and Rule 28(2) EPC

The Enlarged Board’s answer to the re-phrased questions was, in brief, that “a particular interpretation which has been given to a legal provision can never be taken as carved in stone” and that “the introduction of Rule 28(2) EPC allows and indeed calls for a dynamic interpretation of Article 53(b) EPC”. Thus, Article 53(b) EPC should now be interpreted as excluding product claims and product-by-process claims directed to plants, plant material, or animals if the claimed product is exclusively obtained by means of an essentially biological process or if the claimed process features define an essentially biological process.

Importantly, “In order to ensure legal certainty and to protect the legitimate interests of patent proprietors and applicants”, the Enlarged Board considered it appropriate that the exclusion has no retroactive effect and thus is only applicable to applications whose effective filing date is on/after 1 July 2017, i.e. the date Rule 28(2) EPC was introduced.

In T 1063/18, the invention related to a “cultivated blocky fruit type pepper plant” and the only method described in the application for obtaining the plant was an essentially biological process, namely crossing two previously known peppers followed by selfing and conventional pedigree selection to create stable fixed inbred lines. In light of G3/19, it seems that claims directed to such a pepper would be deemed patentable in applications having an effective filing date before 1 July 2017, but would be deemed excluded from patentability in applications filed on/after that date.

Conclusion

Whilst this decision will be a blow to Applicants in the field of agricultural technology, others will appreciate clarity on this issue, which has been unsettled for many years. That said, the controversy may not be over, as the opinion is already raising questions about the Enlarged Board’s independence and ability to withstand political pressure.