http://ipkitten.blogspot.com/2020/05/breaking-eba-finds-plants-produced-by.html
The Enlarged Board of Appeal (EBA) today issued their opinion in the controversial referral G3/19 (Pepper). The full text of the opinion can be read here. Contrary to what many predicted, the EBA not only found the referral admissible, but also changed their previous interpretation of Article 53(c) EPC to being that plants and animal products produced by essentially biological processes are not patentable.
G3/19 relates to a referral to the EBA by the President following the Board of Appeal decision in T 1063/18 (Pepper). In T 1063/18 (Pepper) the Board of Appeal found that Rule 28(2) EPC (amended by the Administrative Council (AC)) was in conflict with the prior interpretation of Article 53(c) EPC by the EBA in G 2/12 and G 2/13 (Broccoli/Tomato). The Board of Appeal in T 1063/18 (Pepper) thus found that the AC Rule amendment was void. The Board of Appeal also did not feel it necessary to refer the issue to the EBA, reasoning that the EBA had already decided on the question in G 2/12 (Broccoli/Tomato II). The President subsequently referred the question of the patentability of plants produced by essential biological processes to the EBA following a meeting of the AC.
| Hopes for the patentability of natural plant products wither |
The EBA found the referral from the President to be admissible. The EBA further endorsed the 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 EBA opinion appears at odds with their previous opinions in G2/12 and G2/13. How can the EBA change its mind on such a key aspect of EPC interpretation? The EPO press release explains:
“On the merits of the referral, the Enlarged Board endorsed its earlier findings on the scope of Article 53(b) EPC, which were based on the classical (i.e. the grammatical, systematic, teleological and historical) methods of interpretation. However, the Enlarged Board found that a particular interpretation which has been given to a legal provision can never be taken as carved in stone, because the meaning of the provision may change or evolve over time. This meant that decisions G 2/12 and G 2/13 did not settle the meaning of Article 53(b) EPC once and for all.
Taking account of the Administrative Council’s decision to introduce Rule 28(2) EPC, the preparatory work on this provision and the circumstances of its adoption, as well as legislative developments in the EPC contracting states, the Enlarged Board concluded that new Rule 28(2) EPC allowed and indeed called for a dynamic interpretation of Article 53(b) EPC.“
Today’s opinion from the EBA will come as a surprise to many patent practitioners. Many (including this Kat), had predicted that the EBA would find the appeal inadmissible – citing the lack of divergent case law to justify the referral [Merpel: Today’s EBA opinion thus raises again the question of whether the EBA is truly independent and able to withstand pressure from the President and AC]. The EBA’s full-reasoning will require careful reading. However, regardless of the reasons behind it, today’s opinion will undoubtedly come as a blow to the European Agritech industry and the owners of the many patent applications stayed during prosecution pending the outcome of the referral. None-the-less, today’s opinion will importantly not have a retroactive effect on patents filed before Rule 28(2) EPC came into effect (1 July 2017).
IPKat is still digesting the opinion and will be back with more commentary in the coming days.
Further Reading:
The President’s Referral: Pepper gets spicy: The EPO President’s Referral to the EBA
Board of Appeal decision T 1063/18: BREAKING: TBA decides that Rule 28(2) EPC, excluding plant products produced by essentially biological processes from patentability, is void
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