EPO President’s Referral to the Enlarged Board

Are plant products produced by essentially biological processes patentable?

By referring two questions to the Enlarged Board of Appeal, the President of the EPO has attempted to gain some clarity as to whether plant products produced by essentially biological processes are patentable. A significant issue at hand, however, is whether these questions will be deemed admissible.

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Background

As previously reported, in G 2/12 (Broccoli and Tomatoes II), the Enlarged Board of Appeal found that Article 53(b) EPC did not exclude plants produced by essentially biological processes from patentability.

Nevertheless, following guidance from the European Commission that the Biotech Directive excluded plants produced by essentially biological processes from patentability, the Administrative Council (AC) amended Rule 28 EPC to explicitly exclude said plants from patentability.

Later, in T 1063/18 (Peppers), the Board found that the AC's amendment of Rule 28 EPC was in conflict with the prior interpretation of Article 53 EPC in G 2/12. As such, the Board found that the Rule 28 EPC amendment by the AC was void.

President's Referral

Following support from a number of EPC contracting states, the President has decided to try to discover whether the Boards should be following the guidance from G 2/12 or, instead, that of newly amended Rule 28 EPC.

As such, the President has referred the following questions to the Enlarged Board:-

  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?

  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?

It is noted that no two Boards of Appeal have given different decisions on the question of the patentability of plant products produced by essentially biological processes, and this is the reason for the slightly obscure questions.

In any event, the President has attempted to determine whether the AC was right to ignore G 2/12 in its amendment of Rule 28 EPC. If the answer to question 1 is "no", then it is clear that the amendment to Rule 28 is void. If, however, the answer to question 1 is "yes", then question 2 becomes relevant.

Conclusion

A significant issue at hand, however, is whether these questions are admissible. Although the President remains confident that there exists conflicting Board of Appeal Decisions that warrant a referral to the Enlarged Board, others are less sure.

For example, it is clear that in the case of question 2 the President has felt the need to reiterate the purpose of the "different decision" criteria of Article 112(1)(b) EPC, i.e. that it prevents the President from referring questions to clarify abstract points of law. The president notes that question 2 does not seek to clarify an abstract point of law but, instead, question 2 is a "concrete question".

It is clear that further clarification on the points raised is needed, but it remains uncertain as to whether the Enlarged Board will consider the questions referred to it.

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