The Board of Appeal of the European Patent Office declared Rule 28 (2) EPC void. The Rule was introduced last year to prevent patenting of plants and animals resulting from processes involving breeding steps. However, such exclusion was not justified under the European Patent Convention according to the Board.
On December 5, 2018, the Board of Appeal in case T 1063 / 18 reviewed a decision of an Examining Division of the European Patent Office (EPO) refusing grant of a patent directed to pepper plants. The claimed invention pertained to sweet pepper plants having increased color and size and which resulted from a smart-breeding process involving steps of crossing and selection. During examination of the application the Examining Division refused product claims to sweet pepper plants as being excluded from patentability under Rule 28(2) of the European Patent Convention (EPC), which was newly introduced in 2017.
The patenting of plants and animals, and breeding processes of plants and animals, have been the subject of many court cases at the EPO until today. In Article 53b EPC, substantive European patent law excludes from patentability all inventions that are directed to essentially biological processes for the production of plants or animals. The exclusion of Article 53b EPC was extensively analysed and interpreted by the highest judicial instance of the EPO in the infamous “tomato and broccoli I” cases (G 2 / 07, G2 / 08), in which the Enlarged Board of Appeal (EBoA) used an unusually broad interpretation of the exclusion to prohibit patenting of any process involving crossing and selection of genomes independent of other technical steps. Subsequently, in “tomatoes and broccoli II” (G 2 / 12, G 2 / 13) the EBoA however clarified that the broad exclusion under Article 53b EPC is applicable only for process claims. In other words, patent protection is still available for the plants or animals as such produced with such methods, provided they comply with all other requirements of patentability.
In the wake of tomatoes / broccoli II, many interested parties were unsatisfied with the implications, and lobbying and political engagement apparently led the European Commission to retroactively interpret the Biotech Directive, the blueprint for the European biotech patent law, to allegedly exclude patentability of such plants and animals. Under such pressure the EPO last year introduced a new Rule 28(2) EPC explicitly excluding patentability in respect of plants or animals exclusively obtained by means of an essentially biological process. From then on, applicants of such technologies at the EPO had to ensure to carve out any claims to their inventive plants and animals to avoid refusal of their application. Often the introduction of a disclaimer of plants and animals was used.
In the case now decided, the applicant did not follow this procedure and instead appealed a decision to refuse a patent to pepper plants under new Rule 28(2) EPC. Interestingly the Board of Appeal came to the conclusion that the introduction of the new rule by the EPO was in clear conflict with Article 53b EPC as interpreted extensively by the EBoA in the tomato and broccoli I and II cases, and that therefore the Rule is null and void. Under tomato and broccoli II the EBoA explicitly saw no problems with claims to plants and animals under Article 53b EPC. Since articles of the European patent convention prevail in case of a conflict with a rule, patents can be granted in respect of plants or animals exclusively obtained by means of an essentially biological process. Rule 28(2) EPC obviously was introduced in contradiction of the original convention – a fiasco for the administrative council of the EPO.
The decision is not only positive for applicants involved with plant and animal technologies, but also a positive signal for all users of the European patent system. The decision ensures legal predictability of the European patent system and underlines independence of the Boards of Appeal. Political turnarounds cannot be easily formed into new rules without proper legislative procedure. If there is a public interest to exclude patentability of plants and animals, only a diplomatic conference can change substantive European patent law (the Convention) and this will rightly involve democratically legitimized parliaments of the member states.
How to deal with this now
There are also practical implications of the decision: it is highly advisable in all pending examination procedures to remove from claim sets any disclaimers of plants and animals that were introduced to circumvent the exclusion of Rule 28(2) EPC. Claim your inventive plant and animal technologies!