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As previously reported, 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.”
The representatives of the 38 EPO Contracting States together with the European Patent Office have discussed the need to find a solution following the decision T 1063/18 and the case has now been referred to the Enlarged Board of Appeal to obtain an opinion on the patentability of plants exclusively obtained by essentially biological processes. The referral should clarify recent legal developments (interpretations and statements of the European Commission, the EU Council, European Parliament and EPO’s Administrative Council on the interpretation of the European Patent Convention and the EU Bio-Directive, all of them concluding that there should be no patentability in these cases). The case has been allocated as G3/19.
For a summary of T 1063/18 please also see our update of 21 December 2018.
In succession of the referral to the enlarged board, 9 April 2019 a “stay of proceedings” of all cases before the EPO examining and opposition divisions in which the decision depends entirely on the outcome of the Enlarged Board of Appeal’s decision was issued. This stay of proceedings concerns patent applications or patents in which the claimed subject-matter encompasses a plant or animal exclusively obtained by means of an essentially biological process. Patent applications or patents claiming other plant-related inventions will not be affected.
To complicate things further, submissions from third parties have already been filed stating that the referral to the enlarged board is inadmissible, in part since the T 1063/18 decision is not in conflict with previous decisions.
Although the EPO states that “The EPO endeavours to restore legal certainty fully and speedily in the interest of the users of the European patent system and the general public”, the referral most likely means that there will not be any fast clarification to what is in fact patentable in relation to “plants exclusively obtained by essentially biological processes”. History of the such referrals shows that it is a long process before a decision from the Enlarged Board of Appeal is issued, especially since the public will also be heard before any decision is made.
In any event, the current uncertainty of what is in fact patentable in relation to plants makes it recommendable to seek professional advice in any matter relating to patentability of plants and processes for producing such plants. This is also true for third parties, such as plant breeders interested in seeking advice in relation to freedom to operate for plants obtained exclusively by essentially biological processes.