Third time lucky? Decision of the EPO’s Enlarged Board of Appeal of May 14, 2020 on patentability of plants and animals

This blog has previously examined the different decisions regarding the disputed patentability of plants and animals exclusively obtained by essentially biological processes.

The matter revolves around Article 53(b) of the EPC, which excludes from patentability, among others, “…essentially biological processes for the production of plants or animals,” and its application to the plants and animals produced in those processes. The EPO initially stated that plants and animals obtained in this way were patentable under article 53(b) of the EPC, which only envisages processes, and granted a patent on a type of tomato and a type of broccoli. At that time, and against the opinion expressed by the European Commission, which defended that plants and animals were non-patentable, the EPO maintained that that patentability was compatible with article 4 of Directive 98/44/EC on biotechnological inventions. In view of this disparity between the EPO and the Commission, in July 2017, the EPO resolved to amend Rules 27 and 28 of the implementing regulations of Part II of the EPC and harmonize interpretations to exclude animals and plants obtained exclusively by essentially biological processes from patentability.

However, the harmony was broken again when, in December 2018, in case T 1063/18, the EPO’s Board of Appeal, decided that the amended Rules (in particular, Rule 28) infringed article 53(b) of the EPC and were, therefore, void. As a result, plants and animals obtained by essentially biological processes became patentable in the EPO again, despite this contradicting Directive 98/44/EC in the Commission’s interpretation.

In what could be the end of the saga, at the request of the EPO’s President, on May 14 (Case G 3/19), the Enlarged Board of Appeal ruled in favor of abandoning its initial position and interpreting article 53(b) of the EPC in accordance with Rule 28, i.e., excluding plants and animals exclusively obtained by essentially biological processes from patentability.

To protect the legitimate interests of patent holders, the Enlarged Board of Appeal states that the new interpretation of article 53(b) will not apply retroactively to patents granted or applied for before July 1, 2017 (date of effect of Rule 28). Naturally,  that non-retroactivity will not affect the possible questioning of the validity of these patents in view of Directive 98/44/EC.

Author: Jorge Llevat