A tale of broccoli, tomatoes and peppers – further uncertainty for Applicants

Are products exclusively obtained by essentially biological processes patentable at the EPO? This question has been somewhat controversial for many years. Following a decision by the Technical Board of Appeal earlier this year, the latest instalment in the tale of broccoli, tomatoes and peppers comes in the form of a referral by the President of the EPO to the Enlarged Board of Appeal (G3/19).

Whilst the admissibility of the referral has been called into question, the EPO issued a Notice on 11 April that all proceedings before the examining and opposition divisions in which the decision depends entirely on the outcome of the Board’s decision will be stayed until the Board of Appeal issues its decision. Search proceedings will not be affected. The stay 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 however not be affected. The EPO will inform the Applicant or Patentee if the proceedings on the case are stayed.

The referral “seeks the Enlarged Board of Appeal to clarify the applicable legal framework” and the following questions have been raised by the President (G3/19):

  1. Having regard to Article 164(2) EPC, can the meaning and scope of Article 53 EPC be clarified in the Implementing Regulations to the EPC without this clarification being a priori limited by the interpretation of said Article given in an earlier decision of the Boards of Appeal or the Enlarged Board of Appeal?
  2. If the answer to question 1 is yes, is the exclusion from patentability of plants and animals exclusively obtained by means of an essentially biological process pursuant to Rule 28(2) EPC in conformity with Article 53(b) EPC which neither explicitly excludes nor explicitly allows said subject-matter?

The EPO’s Notice on the referral states that “The President of the EPO considers the referral to the Enlarged Board of Appeal as an important step on the way to restore legal certainty in the interest of the users of the European patent system and the general public” following the decision in T1063/18.

T1063/18 (see our earlier analysis here) relates to an application in the name of Syngenta with claims to cultivated pepper plants. This was refused by the EPO’s Examining Division in April 2018 as failing to comply with the exceptions to patentability set out in the European Patent Convention (EPC) (Article 53 (b) and Rule 28 (2)). Following an appeal by Syngenta, the Board agreed with the Applicant and found that recently amended Rule 28(2) was in direct conflict with Article 53 (b).

The change in Rules 27 and 28 had come about following the landmark decisions in Broccoli II (G2/13) and Tomato II (G2/12) of the Enlarged Board of Appeal at the EPO in March 2015 and a review of the relevant provisions in the Biotechnology Directive by the European Commission (see our earlier analysis here).

The President’s referral undoubtedly brings uncertainty for Applicants in the agritech field. However, it is also clear that not all plant related inventions will be affected regardless of the outcome of the referral. Claims to transgenic plants as well as plants modified by genome editing should remain patentable. On the other hand, applications with claims to plants that are generated using for example marker assisted breeding may be affected depending on the outcome of the referral.

For more information on these cases and advice in the agritech field, please contact our expert Barbara Fleck.


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