In a decision issued by the Technical Board of Appeal on 5 February 2019 (T 1063/18, 5 December 2018), plant products obtained by an essentially biological process were found to be patentable subject matter.

The decision deals with the conflict between the interpretation of Article 53(b) EPC by the Enlarged Board of Appeal, and Rule 28(2) EPC of the Implementing Regulations.

Essentially biological processes for the production of plants or animals are excluded from patentability according to Article 53(b) EPC. However, the patentability of products of those essentially biological processes has remained a contentious area that has seen several landmark decisions from the EPO Board of Appeals over the last 5 years, of which this latest decision is another.

Conflict between Article 53(b) EPC and the Biotech Directive

Following decisions by the Enlarged Board of Appeal in G2/12 and G2/13, claims directed to plant products obtained by an essentially biological process were found to be allowable. However, a subsequent review of these decisions by the European Commission found the board’s interpretation of Article 53(b) EPC to be at odds with Article 4 of the EU Biotechnology Directive (“the Biotech Directive”). The intention of the Biotech Directive, the European Commission concluded, had been to also exclude products obtained by an essentially biological process.

Rule 28(2) EPC of the Implementing Regulations was subsequently amended by the Administrative Council of the EPO in an effort to preserve legal harmony. This amendment excluded products obtained by an essentially biological process from patentability.

Decision in T 1063/18

The recent decision in T 1063/18 challenges the validity of this amendment to Rule 28(2) EPC, finding it to be in direct conflict with the interpretation of Article 53(b) EPC by the Enlarged Board of Appeal. Since the views of the European Commission, and hence the amendment to Rule 28(2) EPC were not confirmed in a legally binding way, the board concluded that Article 53(b) EPC as interpreted by the EBA should take precedence. Subsequently, the board found that the applicant’s claim directed to a chilli plant obtained by an essentially biological process was patentable subject matter.

Where do we go from here?

This latest decision is good news for rights holders with inventions relating to plants. However, the decision highlights a conflict between the positions of the European Union and the interpretation of the provisions of the EPC by the EPO Boards of Appeal. How will this conflict be resolved? Further attempts to amend the Implementing Regulations to the EPC under the direction of the EU would likely arrive at a similar decision as in the present case.

An amendment to Article 53(b) EPC itself may be one way to restore harmony between the EPC and the position of the EU. However, the European Patent Convention is an agreement that extends beyond simply the EU member states. Amendments to the EPC at the request of the EU could be met with some resistance.

The decision could be seen as a victory for patent proprietors in this technical area, but given the interest of the EU Commission in achieving harmonisation in patent law for biotechnological inventions, one suspects that we have not heard the last of this matter.