Plants and animals are not patentable after all

Decisions about patentability of plants and animals have gone back and forth over the last couple of years, and IP owners have been ill-equipped to make strategic decisions related to IPR within this specific technical field.  A few days ago, the EPO published the decision “G 3/19”, which hopefully settles the matter.

The short version of the G 3/19 decision set by the Enlarged Board of Appeal of the European Patent Office (EPO) is that plants and animals exclusively obtained by means of essentially biological processes are not patentable (source: EPO 14/5/2020).

Hopefully, this decision will settle the previous uncertainty in this field, which surfaced after 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 despite the amended Rule 28(2) of the European Patent Convention (EPC), which states:

“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.”

Judging by the press release from the EPO, it is now officially settled that plants and animals exclusively obtained by means of essentially biological processes are not patentable. 

No retroactive effect

To accommodate issues around previous rules and circumstances, it has been decided that the new decision will have no retroactive effect on European patents containing claims related to plants or animals obtained by essentially biological processes, which were granted before 1 July 2017 or on pending European patent applications filed before 1 July 2017 and seeking protection for such claims.  

In other words, granted European patents and pending applications should be “safe” from being revoked by the EPO based being “exclusively obtained by means of an essentially biological process”

The question remains of how national courts will assess such claims in future disputes.

IP strategy for plant breeders going forward

The new ruling is considered especially important to more traditional plant breeders, who have been afraid of being restricted by patents from multinational companies, which could take over the market or require license agreements. Plant breeders have historically relied on “plant breeders’ rights” also known as “plant variety rights” (PVR), which are rights granted to the breeder of a new variety of a plant. 

The new ruling also calls for some changes in IPR strategies. Companies who were planning to seek patent protection for plants (or animals) need to find new ways to secure their IP. 

On this note, we encourage plant breeders and firms that work with plant processes to reassess their IP and seek professional advice in case of questions and uncertainties about their strategy going forward. 

European Patent Attorney and expert in plant biotechnology, Jakob Schwalbe Lohmann, follows the news from patent authorities closely and he is ready to answer questions on this matter. You are welcome to get in touch.