In April 2019, a referral (G 3/19) was made to the Enlarged Board of Appeal (EBA) by the President following the decision of T 1063/18, concerning the patentability of inventions relating to plants and animals and the interpretation of Article 53(b) EPC in combination with Rule 28(2) EPC.
Under Article 53(b) EPC, European patents shall not be granted in respect of plant or animal varieties or essentially biological processes for the production of plants or animals. Rule 28(2) EPC provides that 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. Rule 28(2) EPC was introduced by decision of the Administrative Council and came into force on 1 July 2017.
In the 2015 EBA decisions G2/12 (Tomato II) and G2/13 (Broccoli II), it was held that the non-patentability of essentially biological processes for the production of plants or animals under Article 53(b) EPC did not extend to products that are exclusively obtained by means of an essentially biological process. In other words, prior to the introduction of Rule 28(2) EPC, Article 53(b) EPC did not prohibit patenting of plants and animals obtained by essentially biological processes. Technical Board of Appeal followed G2/12 and G2/13 in T 1063/18, indicating that new Rule 28(2) EPC had no impact on the interpretation of Article 53(b) EPC. This led to a referral to the EBA to decide which took precedence - the Rules or the Articles.
The EBA has now decided that plants and animals exclusively obtained by essentially biological processes are not patentable after all - contrary to G2/12 and G2/13. The full text of the opinion can be found here.
In the meantime, the key message to take away from this decision is that Article 53(b) EPC prohibits product claims and product-by-process claims directed to plants, plant material or animals if the claimed product is exclusively obtained by means of an essentially biological process or if the process features define an essentially biological process.
It is important to note that G3/19 does not have retroactive effect. It will be interesting to see, however, how G3/19 will affect currently pending and stayed plant-related patent applications and post grant proceedings.
Finnegan will continue to follow this matter.
Originally published 15 May 2020
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