We may be approaching the end of the year, but the saga of patents for plant related inventions at the EPO continues to develop. The Administrative Council of the EPO had tried to introduce some legal certainty in this area last year, by introducing new Rule 28(2) into the Implementing Regulations of the European Patent Convention (EPC). That new rule prohibits 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 new rule was not without controversy, because it did not seem to be consistent with the Articles of the EPC.
In the latest phase of this story, EPO Technical Board of Appeal 3304 noted this inconsistency. In a hearing on 5 December 2018, they decided that the EPO were wrong to refuse to grant a patent to a new pepper plant as the product of essentially biological processes under Rule 28(2). According to the EPO (see here), they reasoned that the new rule is not consistent with the EPC and, in the case where there is such a conflict, the Convention prevails over the rules. In other words, the Board has suggested that new Rule 28(2) is void, and that the EPO should be able to grant patents for plants and animals derived from essentially biological processes.
What does this mean for patentees and applicants?
Well, we’re back to uncertainty, and waiting to see what happens next. The official written decision of the Board is not expected to issue until the new year, and until then we can only guess at the reasons behind the decision. It is not clear what the EPO will do in response – we might expect a further stay of proceedings, yet again hitting pause on the examination of cases relating to these inventions. We might also see the Administrative Council amend the Implementing Regulations again, to remove the offending rule. In the meantime, the rule remains in place, with a question mark as to whether or not it is void.