EPO regulation is in conflict with the law

EPO Appeal Board exercises its judicial independence

The below article tells the story of how the Administrative Council of the EPO, following political pressure from the EU Commission adopted a rule change in 2017 which in subsequent proceedings pertaining to the EPO’s refusal of a European patent application was held to contravene the European Patent Convention (EPC). The course of events also tells the story about the judicial independence of the EPO’s Boards of Appeal.

The following article is being published by Managing Intellectual Property in March 2019.

Appeal Board vetoes EPC regulation

Jakob Pade Frederiksen reports

Following the so-called “Tomato II” and “Broccoli II” decisions rendered by the EPO’s Enlarged Board of Appeal in 2015, the politically delicate question of patentability of plant or animal varieties as well as essentially biological processes for the production of plants or animals has once again occupied the EPO, now with the uncomfortable implication that a Technical Board of Appeal of the EPO has revealed a conflict between two legal provisions within the framework of the EPC.

The Tomato II and Broccoli II decisions, G 2/12 and G 2/13, held that products derived from essentially biological processes may be patentable, even if the process used to obtain the product is essentially biological and hence not patentable. In particular, the EBA concluded that Article 53(b) EPC, excluding plant or animal varieties and essentially biological processes for the production of plants or animals from patentability, did not extend to plants or plant material or plant parts other than a plant variety.

In the wake of these decisions, the European Commission released a Notice in November 2016 expressing  that the EU legislator’s intention when adopting the “Biotech Directive” (98/44/EC) was to exclude from patentability plants, animals and parts thereof obtained by means of essentially biological processes. On this background, the Administrative Council of the EPO implemented as of 1 July 2017 new Rule 28(2) EPC specifying that under Article 53(b) EPC, “European patents shall not be granted in respect of plants or animals exclusively obtained by means of an essentially biological process.”

By decision T 1063/18 concerning the refusal under Rule 28(2) EPC of EP 2 753 168 and made available on 5 February 2019, a Technical Board of Appeal of the EPO held that Rule 28(2) EPC is in conflict with Article 53(b) EPC, as interpreted by the EBA in the above-referred decisions. In accordance with Article 164(2) EPC, the Appeal Board held that the provisions of the Convention, i.e. Article 53(b) EPC shall prevail. In other words, Rule 28(2) EPC is null and void. Given the public interest in the matter concerned and the ethical aspects involved, and having regard to the political signals conveyed by relevant EU bodies, it would seem likely that further legislative initiatives may soon be taken in order to resolve the conflict between EU legislators’ views and the provisions of Article 53(b) EPC.