The “Broccoli war“, on which we have already discussed earlier (see here), has been enhanced with a new chapter: the European Commission in its Communication 2016/C 411/03 has taken a position on the conflict that developed in recent months between Parliament Europe and the European Patent Office (“EPO”) on the delicate issue of the patentability of products produced through essentially biological methods.

The contrast has developed around some decisions taken by the European Patent Office that, as of March 2015, has declared patentable products (including the now well-known broccoli) obtained through essentially biological processes.

According to the Parliament the practice followed by the European Patent Office is contrary to the principles of European law, which prohibit the patenting of products obtained by essentially biological methods.On this basis, the Parliament called on the Commission to clarify the actual content of Directive 98/44 / EC on biotechnological inventions.

In responding to Parliament’s request by the Communication 2016 / C 411/03, the Commission has endorsed the Parliament position, confirming that European legislation prohibits the patenting of products obtained through essentially biological methods.

Origin of the conflict of interpretation

With the signing of the European Patent Convention in 1973, the European Patent Organization has been established, which includes 38 states, 28 of which belong to the European Union while 10 are not members of the European Union.

The European Patent Office which has the institutional task of granting European patents on the basis of the procedure outlined by the European Patent Convention, is not obliged to act in accordance with the European legislation but only with the procedure laid down by the Convention, which establishes the criteria for the granting of the European Patent.

In relation to biotechnological inventions, Article 53 letter b) of the Monaco Convention stipulates that no European patents can be issued “… for plant varieties or animal breeds and for essentially biological processes for the production of plants or animals.”

For essentially biological processes it means the “traditional” biological processes for the production of plant and animal varieties, such as selection or crossing.

The EPO has interpreted literally Article 53 letter b), noting that the norm expressly prohibits only the patenting of biological processes and not of the products obtained through such procedures.Therefore, according to the EPO the rule should be interpreted restrictively and organic products should be considered patentable even if they are only obtainable with these conventional methods for which the patentability is excluded.

The position of the European Commission

Article 4, par.1) of Directive 98/44/EC exactly reproduces the content of Article53 letter b) of the Munich Convention, therefore, in theory, it could also be interpreted restrictively by the Commission.

Thus the European Patent Convention and the EU Directive on biotechnology contain provisions that are substantially the same, as to the patentability of biotechnological invention, but rather different is the interpretation of those provisions given by the EPO, on the one hand, and the European institutions, on the other side.

With the Communication 2016/C 411/03, the Commission has expressed an opinion in the opposite direction than the one adopted by the EPO, by stating the principle that “the intention of the EU legislature when adopting the Directive 98/44/EC was excluded from patentability products (plant/animal) obtained through essentially biological processes.

Therefore, according to the Commission, patentability is forbidden not only with regard to the essentially biological processes but also in relation to the products obtained through such processes.

The Commission has reached the conclusion on the basis of a systematic interpretation of the law provisions. In fact, while the wording of Article 4 paragraph 1) of Directive 98/44 prohibits only the patenting of biological processes, the Commission pointed out that paragraph 3) of Article 4 lays down an exception to paragraph 1), by permitting the patentability of microbiological processes and of the products obtained by such processes. The Commission has argued that if the legislature had not intended to prohibit the patenting of products obtained by essentially biological method, it would not be necessary to specify, in paragraph 3) that the products obtained by essentially microbiological methods are patentable.

Different interpretations and political divergences

It is clear that different interpretation of equivalent legal provisions, conceals a different political approach to the issue of patenting of the so called “living material”.

The EPO has indeed taken a markedly commercial position, probably welcome by the industry, coming in fact to affirm the principle that the biotechnological invention is always patentable; in contrast to the Commission and the EU Parliament who have stated that biotechnological inventions are patentable only if they have a technical content and not if they are obtained through essentially biological processes.

As the Commission itself points out in its Communication 2016 /C 411/03, the European Patent Organization is not required to transpose the main provisions of the Directive into the Munich Convention, being a legally independent organization, not included in the European Union institutional framework.

However, with the entry into force of the Agreement on the Unified Patent Court, the divergence of positions between EPO and EU bodies, is destined to become critical: the validity of European patents granted by the EPO will have to be ruled out by the Unitary Patent Court, which will be an European Union body. The latter will be bound to apply first and foremost the European Union legislation and only secondarily that of the European Patent Convention.

On the basis of the conflict of interpretation outlined above, it is easy to foresee that European patents granted by the EPO in violation of European law, might be declared invalid by the newborn Unified Patent Court.