Patentability of Plants and Animals exclusively obtained by Essentially Biological Processes

|Gert Würtenberger|

Article 53(b) of the European Patent Convention (EPC) excludes from patentability plants or animal varieties or essentially biological processes for the production of plants or animals. This exception, however, does not apply to microbiological processes or products thereof.

In its decision G 2/12 (Broccoli II/Tomato II) the Enlarged Board of Appeal (EBA) of the EPO found products produced by natural or essentially biological in the sense of Article 53(b) EPC processes to be patentable. As a reaction to that decision, the Administrative Counsel (AC) of the EPO introduced Rule 28(2) EPC to exclude prod-ucts produced by natural processes from patentability. The EPO had chosen that “legislative” path as amendments to the relevant Articles of the EPC must be unani-mously supported by the contracting states of the EPC (Article 172 EPC) or require a full diplomatic conference.

However, the BoA found in its decision T 1063/18 (Pepper) that Rule 28(2) EPC was void as it was in conflict with the prior interpretation of Article 53(b EPS by the EBA in G 2/12 (Broccoli II/Tomato II). For this reason, the President decided to refer the question of patentability of plants produced by essential biological processes to the EBA.

The EBA concluded after re-phrasing the referral of the President the EBA that the term “essentially biological processes for the production of plants or animals” in Article 53(b) EPS is to be understood and applied as extending to products exclusively ob-tained by means of an essentially biological process or if the claimed process feature defines an essentially biological process.

This decision is an outstanding example how the AC can change the EPC by amend-ing the rules without anonymous agreement from the contracting States or by means of a diplomatic conference. While clearly conditions for amendments the EPC by any rules of the AC were not given, the EBA had not to decide on the legality of intro-duction of Rule 28(2). This was due to the rephrasing of the questions referred to the EBA as the same no longer related to the introduction of Rule 28(2) EPC. In contrast, the EBA focused on the question whether it could change its mind of inter-pretation of an Article. Insofar the EBA considered whether Rule 28(2) EPC have any influence on the interpretation of Article 53(b) EPC. The EBA held that in light of introduction of Rule 28(2) EPC the intention of the contracting States became clear to exclude plants and animal products produced by natural processes from patenta-bility. In this context, the EBA reasoned that interpretations of Articles would not be “carved in stone” but should be subject to late developments regardless whether they are legal, practical or factual. For this reason, EBA found that “although neither the Contracting States, in accordance with Article 172 EPC, nor the Administrative Council, in accordance with Article 33(1)(b) EPC, has formally amended Article 53(b) EPC to extend the scope of the process exclusion to animals, plants and plant mate-rial obtained by essentially biological processes, when now interpreting Article 53(b) EPC, the Enlarged Board cannot ignore the Administrative Council’s decision to in-troduce a new paragraph 2 in Rule 28 EPC”.

In essence, this decision means that no product claims and product-by-process claims directed to plants, plant material or animals can be granted if the claimed product is exclusively obtained by means of an essentially biological process or if the claimed process feature defines an essentially biological process. This new interpreta-tion of Article 53(b) EPC has no retroactive effect on European patents granted or applications filed before 1 July 2017 containing such claims.

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