The European Technical Board of Appeals recently released its decision in case No. T1063/18 regarding the patentability of plants produced by essential biological processes. The decision overturns a decision made by the examining division of the EPO (European Patent Office) to refuse a European patent application related to pepper plants on grounds that the application could not be approved under Rule 28 (2) EPC. The decision to refuse registration was appealed by the applicant. This decision is a part of a long-time debate and legal uncertainty regarding the patentability of plant products produced by essential biological processes.

Rule 28(2) EPC was amended in 2017 to exclude plant products produced by essentially biological processes. This relates to Article 53(b) EPC, which excludes essentially biological processes for the production of plants or animals from patentability. The European Enlarged Board of Appeal interpreted Article 53(b) EPC in G 2/12 (also known as the “Tomato II” case, of the Volcani Institute, represented by our firm) and in G 2/13 (also known as the “Broccoli II” case) very narrowly, holding that Article 53(b) EPC should not prevent claims directed to plants or plant products produced by essentially biological processes.

The Technical Board of Appeal stated that the recently amended Rule 28(2) EPC “could not be interpreted in such a way that it was not in conflict” with Article 53(b) EPC, as interpreted by the Enlarged Board of Appeal in decisions G 2/12 and G 2/13. Furthermore, since Articles prevail Rules according to Art. 164(2) EPC, the recent 2017 amendment made to Rule 28(2) EPC is now void. The case has now been returned to the examination division of the EPO for further examination.

The European Technical Board of Appeal’s recent decision in T1063/18 is a major turn of events for the international agritech industry renewing the hope for IP protection to developers and investors in the field. Of particular relevance is this decision to the emerging field of Cannabis breeding. To the date of T1063/18, Cannabis plants were excluded from patentability in the EPO, forcing patentees to settle for a narrow scope protection on the variety itself via UPOV or for patents only when the product itself e.g., Cannabis oil, could be defined distinctively. In view of the T1063/18 decision we should expect seeing more patents related to Cannabis filed and issued in EPO.