Clear rules for patentability of plants remain a distant prospect

On the 5th of November, the EPO Technical Board of Appeal (case T1063/18) came to the surprising conclusion that plants produced according to essentially biological processes need to be held patentable. The Board of Appeal reached this conclusion despite the amendment of Rule 28(2) of the European Patent Convention (EPC) in 2017, to explicitly state:

“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.”

According to the Kluwer Patent Blog, the rationale behind the decision is that the amended Rules 27 and 28 EPC are in conflict with Article 53(b) EPC. The correct interpretation of Article 53(b) has already been provided by the Enlarged Boards of Appeal in case G2/07, G1/08 and the corresponding cases G2/12 and G2/13 (tomato and broccoli).

On 7 December 2018, the Boards of Appeal sent out a brief comment on the decision, stating that the technical Board, in their decision, referred to Article 164(2) EPC. Here it is stated that the provisions of the Convention (i.e. the Articles of the EPC) prevail in case of conflict with the Implementing Regulations (i.e. the Rules of the EPC).

According to the Boards of Appeal, the written decision, containing all the board’s reasons, is expected to be issued early next year. We will therefore continue to follow the development closely.

Since the Boards of Appeal are an independent body of the EPO, it will be interesting to follow how the EPO reacts to the decision. Further, it will be interesting to see whether the member states of the EPO will require e.g. a ruling by the Court of Justice of the European Union (CJEU) on Article 4(1)b of the Biotech Directive.

In any event, the foreseen clarification of what is in fact patentable in relation to plants seems far away. Thus, we recommend seeking professional advice in any matter relating to patentability of plants and processes for producing such plants.

We recommend reading the full blog post on the Kluwer Patent Blog.