You might think that an article dealing with broccoli, tomatoes and peppers ought to be on a recipe blog. However, these are the names of high profile cases in an area that, over recent years, has seen more change in European patent law than perhaps any other. It now seems that the European Patent Office wants closure.

We reported here on the most recent decision of the Enlarged Board Of Appeal (G3/19). The decision brings the European Patent Office's position on patentability of plants or animals produced by essentially biological processes into line with that of the Biotech Directive. The Enlarged Board's opinion clarifies that Art. 53(b) EPC in combination with Rule 28(2) excludes animals and plants produced by essentially biological processes from patentability.

Background 

Art. 53(b) of the European Patent Convention states that:

"European patents shall not be granted in respect of plant or animal varieties or essentially biological processes for the production of plants or animals…"

According to Rule 28(2) this exception to patentability further applies to plants or animals exclusively obtained by means of an essentially biological process.

However, the patentability of plants or animals obtained by means of an essentially biological process has been up for debate several times over the last decade or so.

History 

The origins of this case go right back to Enlarged Board of Appeal decisions G2/07 (Broccoli) and G1/08 (Tomatoes).These cases concerned to what extent a method step of a technical nature took a process for producing plants outside the "essentially biological" exclusion of Art. 53(b).For the patent proprietors in these cases, the relevant method step was not technical enough.

In view of the G2/07 and G1/08 decisions, both proprietors limited their claims to product claims, but doubts were then raised about patentability of the products.And so we arrive at G2/13 (Broccoli II) and G2/12 (Tomato II).

Based on the grammatical, systematic, teleological, and historical interpretations of the wording, the Enlarged Board decided that the exclusion of Art. 53(b) should be interpreted narrowly, and in particular, should not extend to a product claim directed to plants or plant material (other than a plant variety):

"The exclusion of essentially biological processes for the production of plants in Article 53(b) EPC does not have a negative effect on the allowability of a product claim directed to plants or plant material such as a fruit."

However, some considered the view of the Enlarged Board to be at odds with the intention of the Biotech Directive upon which Art. 53(b) is based.The European Commission reviewed the Biotech Directive, and concluded that it was intended to exclude products produced by essentially biological processes from patentability, and not merely exclude the processes themselves, and this was the position in several of the EPC member states.

In July 2017, the Administrative Council of the EPO decided to amend Rule 28 explicitly to exclude plants or animals exclusively obtained by means of an essentially biological process from patentability, in order to reflect the European Commission's position.

But what about Broccoli II and Tomato II? The amendment to Rule 28 contradicted the Enlarged Board's decision in G2/12 and G2/13!

Never fear, the Technical Board of Appeal in T1063/18 (Pepper) decided that the amendment to Rule 28 was void, and based on the fact that the Enlarged Board had already decided the matter in G2/12 and G2/13, did not refer the issue back to the Enlarged Board.

All was once again clear. Or was it?

Referral to the Enlarged Board Of Appeal 

Somewhat controversially the EPO President nevertheless referred the question to the Enlarged Board.And the recent opinion given in G3/19 contradicts the Board's own previous decisions given in G2/12 and G2/13! The Enlarged Board has now found that plants produced by essentially biological processes are not patentable after all.Rule 28(2) thus stands, though the findings of G3/19 will not have retroactive effect on patents filed before it came into effect (1 July 2017)

Ultimately the Enlarged Board has claimed that its earlier finding was not set in stone and it is allowed to change its mind to reflect the changing meaning of legal provisions over time.Many will wonder however whether this has more to do with the embarrassment that would be caused internally if the EPO was forced to cancel its own change to Rule 28.