The EPO President, António Campinos, has referred the decision of the EPO Technical Board of Appeal in case T1063/18 to the Enlarged Board of Appeal (EBA).

Note from the author: Since original publication this article has been updated to reflect recent developments on the subject.

Background

The patentability of products of essentially biological processes has been a contentious area over the last 5 years. This new referral will mean that it remains so for at least a while longer.

Many thought the issue was resolved in 2015 when the EBA issued its combined decision in the Broccoli II and Tomatoes II cases (see G2/12 and G2/13). However, in 2017, the Administrative Council amended Rule 28(2) EPC, aiming to bring it into line with the EU Biotechnology Directive (“the Biotech Directive”). The intention of Article 4 of the Biotech Directive was to exclude products obtained by an essentially biological process.

Nick Bassil and Jessica Duncombe recently reported on the presently referred decision, which relates to the patentability of pepper plants obtained by an essentially biological process. The Board found that plant products obtained by an essentially biological process were patentable subject matter and, in doing so, challenged the validity of the Administrative Council amendment to Rule 28(2) EPC, finding it to be in direct conflict with the interpretation of Article 53(b) EPC by the EBA in decisions G2/12 and G2/13.

What’s next?

The original EPO press release regarding the referral noted that “the President’s proposal received broad and overwhelming support from almost all Contracting States”, but it should be noted the power of the President to refer cases to the EBA is not unchecked. In principle, two conflicting Board of Appeal decisions are required, which is not the case here as the conflict is between the EBA and the Implementing Regulations as amended by the Administrative Council. There is therefore doubt in some circles that the referral has the proper legal basis.

If the EBA does not accept the referral, then presumably patents for plant products obtained by an essentially biological process could be continued to be issued by the EPO, despite the underlying tension with the Biotech Directive. Even if the EBA accepts the referral, there is no guarantee that their decision would resolve this tension. In the meantime, the EPO has announced that all proceedings before the EPO examining and opposition divisions in which the decision depends entirely on the outcome of the EBA’s decision will be stayed ex officio until the Enlarged Board of Appeal issues its decision.

Ultimately, an amendment to Article 53(b) EPC itself may be the solution. However, it must be recalled that the European Patent Convention is an agreement that extends beyond the EU member states. Amendments would therefore also need to be agreed upon by countries who are not bound by the Biotech Directive.

Nevertheless, an EBA decision leading to increased certainty on this point would surely be welcomed by an industry that has faced a great deal of legal uncertainty over the last 5 years. In addition to the interpretation of this aspect of the Biotech Directive, over the same period, stakeholders have also had to tackle the implementation of the Nagoya Protocol, which remains a difficult topic more than 4 years after it entered into force. Unfortunately, while a resolution on the topic of patentability of plant products obtained by an essentially biological process may be on the horizon, the ramifications of Nagoya are only beginning to be felt.