On February 5, 2019, the written decision in case T 1063/18 on the patentability of plants has been issued by the EPO Boards of Appeal. With the written decision, the responsible Board’s reasoning for the remarkable conclusion that Rule 28(2) EPC in its current wording is in conflict with and overruled by Art. 53(b) EPC is now publicly available.

In the case underlying decision T 1063/18, Syngenta Participations AG, a subsidiary of Syngenta AG, one of the world’s largest agriculture companies, appealed against refusal of its patent application No. 12 756 468 by the Examining Division of the European Patent Office (EPO). Product claims 1 and 2 were directed to a “cultivated blocky fruit type pepper plant, bearing extreme dark green color at immature harvestable stage”. The color was said to be linked to two genetic determinants (quantitative trait loci, QTL) and was further defined by a number of physicochemical characteristics of the pepper fruit such as Chlorophyll content. The Examining Division had come to the conclusion that these claims were “within the exception of patentability Art. 53(b) EPC and Rule 28(2) EPC”.

During the course of the appeal proceedings, Third Party Observations in support of the Syngenta’s position were filed by a German law firm, a Dutch seed breeding company, an international association promoting agricultural technologies and a lobby organization of the European crop protection industry. A lobby organization of the European seed industry filed Third Party Observations against the Syngenta’s position.

In the written decision, the Technical Board of Appeal in an enlarged composition with three technically and two legally qualified members first focused on the question of how Art. 53(b) EPC must be interpreted in light of the Enlarged Board of Appeal (EBA) decisions G 2/12 (“Tomato II”) and G 2/13 (“Broccoli II”). Art. 53(b) EPC specifically excludes only “plant or animal varieties or essentially biological processes for the production of plants or animals” from patentability. In view of diverging national legislation in the EPC contracting states and some secondary considerations, the EBA reached the conclusion that “product inventions where the claimed subject-matter is directed to plants or plant material such as a fruit or plant parts other than a plant variety, as such are not excluded from being patented” (G 2/12, Section IX.(1) of the Reasons).

After publication of “Tomato II” and “Broccoli II”, the European Commission published a Notice on the interpretation of certain articles of the so-called Biotechnology Directive (Directive 98/44/EC), in which it concluded that the Directive’s intention was to exclude products such as plants and plant parts that are obtained by means of essentially biological processes from patentability.

Subsequent to this Notice, a new paragraph was added to the Implementing Regulations to the EPC by the Administrative Council of the European Patent Organization to directly mirror the Commission’s view. This new Rule 28(2) EPC states that “under Art. 53(b), European patents shall not be granted in respect of plants or animals exclusively obtained by means of an essentially biological process”. From its first publication, there had been doubts regarding its applicability in view of “Tomato II” and “Broccoli II”.

The Technical Board of Appeal in case T 1063/18 now reasons that the interpretation of the Art. 53(b) EPC by the EBA, as in “Tomato II”, must be applied to all currently pending cases and in all subsequent cases before the EPO and the Boards of Appeal. Transitional provisions by the EBA justifying a different approach had not been provided. However, the meaning of Art. 53(b) EPC following “Tomato II” is in conflict with the meaning of new Rule 28(2) EPC, which actually reverses the meaning of Art. 53(b) EPC. For the Board, there is no room for interpreting Rule 28(2) EPC in a manner that could resolve this direct contradiction.

The Board further considers the Notice of the European Commission as having no legal authority since it has not been confirmed in a legally binding way, e.g. by a decision of the Court of Justice of the EU (CJEU). Moreover, the Administrative Council has the power to amend the Implementing Regulations, but is not competent to amend the EPC itself by such an amendment. Thus, the Board sees no reason to deviate from the EBA’s interpretation of Art. 53(b) EPC in “Tomato II” and “Broccoli II”.

In this situation, where an Article of the EPC and a Rule of the Implementing Regulations are in conflict with each other, Art. 164(2) EPC stipulates that “the provisions of the Convention shall prevail”. In view of this provision, the Board saw no reason to refer the case to the EBA and rather decided to set aside the Examining Division’s decision that the subject-matter of claims 1 and 2 was excluded from patentability.

The decision does not finally address all issues with regard to Syngenta’s application, because the Board saw problems as to the clarity of the claims and inventive step. The case was remitted to the Examining Division for further prosecution. But, focusing on the issue of exceptions from patentability, T 1063/18 effectively says that Rule 28(2) EPC is not applicable, because overruled by Art. 53(b) EPC as interpreted by the EBA. This result for now reopens possibilities for applicants interested in protection of, e.g., plants or parts thereof that are not plant varieties (for instance single plants or plant families). However, the issue remains controversial and there is no legal certainty yet. It remains to be seen whether and how the Administrative Council will react to the decision and whether there will be a diverging decision of another Technical Board of Appeal in the future, which would probably lead to a further referral to the EBA.