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Board of Appeal at the EPO: Plants that are the product of an essentially biological process are patentable.

The patentability of plants in Europe has long been controversial.  The European Patent Convention (EPC) provides for the patentability of plants, so long as they are not plant varieties (which are protected by a separate Plant Variety Right).  However, the European Commission issued a Notice in late 2016 that the EU Biotech Directive intended to mean that plants were not patentable if they were obtained by “essentially biological processes”.  The European Commission’s position on EU law was in conflict with the view of EPC law provided by the Enlarged Board of Appeal of the EPO in G 2/12 and G 2/13 (Broccoli/Tomatoes II), but in line with the patent laws in some member states, including France, Germany, Italy and the Netherlands.


Although the EPO is not strictly bound by EU law, the somewhat controversial Notice from the European Commission was adopted by the Administrative Council of the EPO with the amendment of Rules 27 and 28 EPC in 2017.  The amendment was intended to clarify the interpretation of Article 53(b) EPC, following the Commission’s Notice that the Biotech Directive should always have been interpreted to exclude from patentability plants obtained by essentially biological processes.  


However, in the recent EPO appeal decision T 1063/18, an EPO Board of Appeal concluded that the Examining Division was wrong to refuse Syngenta’s application EP 2 753 168 on the basis of being excluded from patentability according to Article 53(b) and amended Rule 28(2) EPC.  The Board of Appeal concluded that plants that are the product of an essentially biological process are patentable at the EPO after all.


Board of Appeal 3.3.04 heard the case on 5 December 2018, in extended form with two legal members in addition to the standard three technical members.  Although the detailed written reasoning is not yet available, the minutes of the hearing and the EPO’s Press Release reveal that the Board held that amended Rule 28(2) EPC is in conflict with Article 53(b) EPC (as interpreted by the Enlarged Board of Appeal in decisions G 2/12 and G 2/13).  The Board referred to Article 164(2) EPC, according to which the Articles of the Convention prevail in case of conflict with the Implementing Regulations, and decided to set aside the decision under appeal and remit the case to the examining division for further prosecution.


The Board of Appeal therefore endorsed the interpretation of Article 53(b) EPC given by the Enlarged Board of Appeal in G 2/12 and G 2/13 (Broccoli/Tomatoes II), rejecting the alleged clarification to the interpretation of the Biotech Directive from the European Commission.  The question was not referred to the Enlarged Board of Appeal, indicating that the Board of Appeal considers the matter to be clear. 


On the one hand, this decision simply confirms that the articles of the EPC have precedence over the rules, which in turn should nullify the conflicting amendment to Rule 28(2) EPC.  This principle is well established, and not controversial.  On the other hand, this decision puts the patentability of plants in Europe back into a state of legal uncertainty, and hands the issues back to the legislator with a clear indication that any amendment to limit the patentability of plants should come from the amendment of Article 53(b) EPC.  Amending articles is harder to achieve than changing the rules.


The decision that plants that are the product of an essentially biological process are patentable may provide some respite for Europe’s Agritech industry, which already faces some of the most stringent regulation in the world on GMOs and gene-edited plants.

Meet the team
Glyn Truscott
Glyn's practice spans a wide range of biotechnology subject-matter, from combination immunotherapies to PCR-based diagnostic assays.
Henrietta Rooney
Henrietta specialises in the life sciences, with particular expertise in biotherapeutics. Henrietta joined Elkington and Fife in 2016.