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Posted on 06 February 2019

As we reported previously, EPO Technical Board of Appeal 3304 recently ruled that a controversial prohibition at the EPO against the grant of patents for plant-related inventions appears to be invalid. Now, with the release of the full decision, their reasoning is now known and may bring some clarity to those working in this space.

Clarity at last? 

The patentability of plants and animals is an ongoing saga at the EPO, and has been the cause of much confusion over the years. In an attempt to introduce some legal certainty in this area, the Administrative Council of the EPO introduced new Rule 28(2) into the Implementing Regulations of the European Patent Convention (EPC).  That new rule prohibited the grant of patents for plants or animals obtained exclusively by essentially biological processes, such as crossing and selection. As we reported at the time, this was not without controversy, because the rule seemed to run contrary to the Articles of the EPC as interpreted by the Enlarged Boards of Appeal.     

The Board ruled that Rule 28(2) EPC clashed with the EPC and, in the case where there is such a conflict, the Convention prevails over the rules. Unlike in previous cases where Rules have collided with the convention, however, the Board notes that in this case there is no scope for avoiding the conflict through reinterpretation. It therefore appears, at least in the Board’s view, that Rule 28(2) EPC is void, and patents for plants or animals obtained exclusively by essentially biological processes should be allowable under the EPC.

The Board went further still, suggesting that the Administrative Council did not have the authority to introduce Rule in the first place as, by reversing the meaning of the Convention as interpreted by the Enlarged Boards, doing so would represent an amendment of an Article of the Convention (which is only allowed following a vote by the contracting states). The Board therefore believes that there was no legal basis for the introduction of Rule 28(2) in the first place. However, the Board lacks the power to amend the Implementing Regulations and remove it.

What happens next?

As for what happens next, it is too early to tell. As decisions of the Boards of Appeal are binding on departments of first instance, we might expect Examination and opposition divisions to follow this decision to ignore Rule 28(2) EPC. However, it is rare for the Board of Appeal to overrule the Implementing Regulations, and the divisions may be reluctant to follow the Board’s reasoning.  We are expecting the EPO to issue a practice announcement very soon, which we hope will clarify the extent to which Rule 28(2) is to be applied.

Update

On 29 March 2019, EPO president António Campinos expressed his view that a President's referral of the case is justified and necessary. The EPO has said that they will, "endeavour to restore legal certainty fully and speedily in the interest of the users of the European patent system and the general public." Read the full article from the EPO here. 

 
Andrew Tindall

Contact Andrew Tindall

Andrew is a member of our life sciences patent team working in the biotechnology sector. His technical experience includes: molecular and cell biology, antibody technology, microbiology, plant engineering and glycosaminoglycan sugars. Andrew has experience in drafting and prosecuting patent applications for local and international clients. He also works on freedom to operate and patent landscape analysis.

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