Patentability of products obtained by essentially biological process at the EPO

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Patentability of products obtained directly by an essentially biological process – The President of the EPO wishes to refer the case to the Grand Chamber of Appeal

At the last meeting of the EPO’s Administrative Council, the representatives of the 38 EPO member states discussed the need to find a solution in view of the legal uncertainty created by the T1063 / 18 decision concerning patentability products obtained exclusively by essentially biological processes.

For memory, the decision T1063 / 18 raises a question of conflict between Rule 28 (2) EPC entered into force on 01.07.2017 and Article 53 (b) EPC.

According to Rule 28 (2) EPC, European patents are not granted for plants or animals obtained exclusively by means of an essentially biological process.

According to Article 53 (b) EPC, European patents are not granted for essentially biological processes for the production of plants or animals. An interpretation of Article 53 (b) EPC was given in decisions G2 / 12, G2 / 13 of the Enlarged Board of Appeal in March 2015.

According to this interpretation, plants obtained directly by an essentially biological process are NOT excluded from patentability.

Consequently, the Board of Appeal 3.3.04, which issued the decision T1063 / 18, considers that Rule 28 (2) EPC is incompatible with Article 53 (b) EPC.

In case of divergence between the Regulations and the Articles of the EPC, the Articles prevail.

Considering the legal uncertainty and insecurity for both applicants and third parties, the President of the EPO asked the following questions to the Enlarged Board of Appeal :

Question 1

« Having regard to Article 164(2) EPC, can the meaning and scope of Article 53 EPC be clarified in the Implementing Regulations to the EPC without this clarification being a priori limited by the interpretation of said Article given in an earlier decision of the Boards of Appeal or the Enlarged Board of Appeal? »

In the referral, the President first addressed the question of whether two Boards of Appeal have given different decisions on the point of law relevant to this first question. Particularly, have two boards differed in deciding whether an Article can be clarified by the Rules in a way that conflicts with prior interpretations by the BAs or EBA?

In the next question, the President refers the issue of the interpretation of Article 53(b) EPC itself:

Question 2

« If the answer to question 1 is yes, is the exclusion from patentability of plants and animals exclusively obtained by means of an essentially biological process pursuant to Rule 28(2) EPC in conformity with Article 53(b) EPC which neither explicitly excludes nor explicitly allows said subject-matter? »

The President argued for the admissibility of Question 2 by way of a broad interpretation of Article 112(1)(b) EPC.

It is also to be noted that while a European patent may be granted for products obtained exclusively by essentially biological processes thanks to the narrow interpretation of Article 53 (b) EPC, it seems that the French part of this patent, however, would be invalid, since from 2016, products exclusively obtained by essentially biological processes are already clearly excluded from patentability in France (Article L611-19 3 ° bis of the CPI).