EPO Enlarged Board of Appeal (EBA) Decision G 3/19 decision sets out detailed and fundamental principles for interpretation of the law relating to the patentability of plants and animal products in Europe in the context of changing political and legislative circumstances. It is notable because it essentially overturns a previous decision of the EBA, uses a form of legal interpretation not previously adopted by the EBA, and discusses the powers of the Administrative Council (AC) of the EPO to amend the European Patent Convention (EPC).

Following new decision G 3/19, plants or animals exclusively obtained by means of an essentially biological process are no longer patentable in Europe. Significantly, G 3/19 reverses the conclusion reached by the EBA in earlier combined EBA decisions G 2/12 and G 2/13 (“Tomatoes II” and “Broccoli II”).

Combined EBA decisions G 2/12 and G 2/13 were published in 2015 and related to the relevance of Article 53(b) EPC to the patentability of plant products obtained by the excluded “essentially biological processes”. In those decisions, the EBA stated Article 53(b) EPC did not exclude such products from patentability, other than plant varieties specifically.

However, Rule 28 EPC was subsequently amended by a decision of the Administrative Council (AC) in July 2017 to include an interpretation of Article 53(b) EPC under new Rule 28(2) EPC. The amended rule states, under Article 53(b) EPC, European patents shall not be granted in respect of “plants or animals exclusively obtained by means of an essentially biological process”. This clearly conflicts with the EBA’s interpretation of Article 53(b) EPC in G 2/12 and G 2/13.

The EBA in G 3/19 has affirmed the earlier Enlarged Board decisions, but has also stated the situation is different now than in 2015 when G 2/12 and G 2/13 were published, because of the amendment to Rule 28 EPC to explicitly exclude plants or animals exclusively obtained by means of an essentially biological process. Given this changing context and to allow for continued legal certainty for patent applicants and third parties, G 3/19 will only be relevant to patent applications filed on or after 1 July 2017, i.e. the date of entry into force of the AC decision.

In addition to overturning an earlier EBA decision, G 3/19 is notable because the EBA considered a “dynamic” interpretation if the EPC. Under a “dynamic interpretation”, it is accepted that considerations may arise after a treaty is signed that might give reason to believe a literal interpretation of the provision’s wording would conflict with the legislator’s aims. We believe this is the first time the EBA has used this approach to law interpretation. The EBA noted the amendment of Rule 28 EPC means “the legal and factual situation underlying decision G 2/12 has substantially changed” (para XXVI.4 of G 3/19). The very fact that this Rule was amended “allows and indeed calls for a dynamic interpretation of Article 53(b) EPC” (para XXVI.7 of G 3/19).

G 3/19 is also interesting because the EBA confirmed the competence of the Administrative Council (AC) to amend the Rules of the EPC. Some have argued this may have expanded the powers of the AC since the EBA in G 3/19 did not take into account the fact a decision by the AC to amend the Articles of the EPC requires a unanimous decision from the member states, whereas amendment to the Rules only requires a three-quarters majority (see Articles 33(b) and 35(3) EPC), yet clearly amendment of the Rules can have a direct impact on the effect of the Articles (cf the amendment to Rule 28 EPC, and the direct effect on the interpretation of Article 53(b) EPC in this case).

This decision can be considered a “win” for bodies advocating for farmers and the plant-breeding sector in Europe, but may serve as a frustration for those in the Agricultural Technology sector, who might legitimately wish to obtain patent protection for their products. However, see our practice points below for how best to avoid the exclusions to patentability, even in this more challenging legal context.

For a more in-depth discussion on this decision, take a look at our longer article on this topic here.

Practice points:

  • Claims to specific plant or animal varieties are not patentable in Europe, but broader claims, e.g. to a species, are patentable – G1/98

  • Claims encompassing essentially biological processes for the production of plants or animals are not patentable in Europe – G2/07 and G1/08). This exclusion is not limited to methods for the production of plant or animal varieties, but applies to methods for the production of any plants or animals. Note an “essentially biological process” in the context of the production of plants and animals refers to the step of sexual crossing.

  • For applications filed before 1 July 2017: claims to plant products obtained by excluded essentially biological processes are patentable in Europe, except for claims to plant varieties obtained by such processes – G2/12 and G2/13.

  • For applications filed on or after 1 July 2017: claims to plant products or animals obtained by excluded essentially biological processes are not patentable in Europe – G3/19.

  • The exclusion to patentability for method claims (and product-by-process claims) can be avoided by including a step of a “technical nature” in the step of crossing, which introduces a trait into the genome or modifies a trait in the genome of the plant produced, whether that technical step is relevant to the invention or not - G2/07 and G1/08.

  • The exclusion to patentability for product claims can be avoided by seeking claims broader than a specific variety, provided the claimed product is not exclusively obtained by an essentially biological process (alternative protection is available for plant varieties, but not animal varieties).