by Emilio Berkenwald

IP NewsMay 18, 20200 comments 0 Likes

EPO’s (final?) decision on patentability of plants and animals

The Enlarged Board of Appeal of the European Patent Office (EPO) confirmed in its most recent decision that plants and animals exclusively obtained by essentially biological processes are excluded from patentability.

This would be the final chapter in a debate that had the Technical Boards of Appeal of the EPO against the European Commission and the Administrative Council of the European Patent Organisation, and which may be summarised as follows:

• Article 53(b) EPC excludes from patentability essentially biological processes for the production of plants or animals.
• In 2015, the Enlarged Board of Appeal had concluded that this exclusion did not extend to plants or animals exclusively obtained by means of an essentially biological process, according to decisions G 2/12 (“Tomato II”) and G 2/13 (“Broccoli II”).
• In 2017, the European Commission promoted the amendment of Rule 28 EPC by the Administrative Council, based on the interpretation of Directive 98/44/CE, thus explicitly excluding plants and animals obtained exclusively by means of essentially biological processes.
• Recently, a Technical Board of Appeal refrained from applying amended R28, arguing that it would be contrary to the European Patent Convention, referring to the Enlarged Board’s decision of 2015.
• In the face of this legal uncertainty, the President of the EPO referred the question to the Enlarged Board in 2019.
• In Decision G 3/19 “Pepper”, the Enlarged Board changed its position and ruled that the exclusion from Art 53(b) also applies to plants and animals exclusively obtained by means of an essentially biological process.

In reaching this conclusion, the Enlarged Board adopted a dynamic interpretation of the Convention, recognising that the 2017 Rule amendment leads to an interpretation that is contrary to the 2015 decisions.

Furthermore, the Enlarged Board claims that this decision shall not have retroactive effect on European patents granted, or pending applications filed, before 1 July 2017, date on which the amended Rule came into force.

The foregoing would not modify patentability before the EPO of plants and animals that are not exclusively obtained from essentially biological processes. For instance, it would be possible to obtain a European patent for genetically modified plants or animals, as long as they are not obtained from traditional reproduction and selection methods.