Board of Appeal at the EPO - The Administrative Council cannot alter the interpretation of the EPC by amending the Implementing Regulations.

In an update to our previous note on the patentability of plants that are the product of an essentially biological process, the written decision of Board of Appeal 3.3.04 in T1063/18 is now available.  This decision confirms that plants that are the product of an essentially biological process remain patentable at the European Patent Office, but the decision also reaches further than this.

 

The controversy that led to the present case arose when the European Commission issued a Notice in late 2016 that the EU Biotech Directive intended to mean that plants or animals were not patentable if they were obtained by “essentially biological processes”. 

 

The European Commission’s position on EU law was in conflict with the interpretation of EPC law provided by the Enlarged Board of Appeal of the EPO in G 2/12 and G 2/13 (Broccoli/Tomatoes II), which found that the exclusion from patentability of essentially biological processes for the production of plants in Article 53(b) EPC does not have a negative effect on the allowability of a product claim directed to plants or plant material such as a fruit.

 

Despite this, the 2016 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, creating the possibility of a conflict between Art 53 of the Convention and the amended Implementing Regulations.

 

EPO Board of Appeal 3.3.04, sitting in enlarged form, concluded in T1063/18 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 in this case 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).  The Board held that if the adoption of Rule 28(2) EPC by the Administrative Council had been taken, this would reverse the meaning of Article 53(b) EPC as interpreted by the EBA which would, in effect, represent an amendment of an Article of the Convention.  In rejecting the adoption of the amended Rule, the Board commented that “the Administrative Council is not …competent to amend the Convention … by amendment of the Implementing Regulations”. 

 

This decision hands the issues back to the legislator with a clear indication that any amendment to limit the patentability of plants obtained by essentially biological processes must come from the amendment of Article 53(b) EPC.  However, amending the Articles of the EPC is much harder to achieve than changing the Rules.  So, for the time being plants (other than plant varieties, which are protected by a separate right) - however they are derived - remain patentable in Europe.

 

Furthermore, the decision confirms that the EPO Boards of Appeal are the authority on the interpretation of the EPC, and that this cannot be circumvented by the Administrative Council adopting amendments to the Rules.  The Articles of the EPC continue to have precedence over the Rules; this principle is well established, and not controversial. 

 

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.