Insights | February 5, 2019

The EPO Board of Appeal rules that plant products can be patentable

The patentability of plant products has been under discussion for a long time. The EPO Enlarged Board of Appeal has accepted the patentability of plant products that are produced by essentially biological processes in the so-called Tomato and Broccoli cases (cases G2/07 and G1/08 and the corresponding cases G2/12 and G2/13). However, the European Commission intervened by giving a Notice in 2016 to clarify that the EU legislator’s intention with the Biotech Directive 98/44/EC was to exclude plants that are obtained by means of essentially biological processes from patentability.

Taking into account the Commission Notice, the EPO Administrative Council amended Rules 27 and 28 of the European Patent Convention (“EPC”) to exclude plants obtained by essentially biological processes from patentability in 2017. Thereafter cases have been examined according to this new practice. For example, in line with this practice and as a result of patent opposition, the Broccoli patent granted to Bayer in 2013 was revoked only a few months ago.

Now the EPO Board of Appeal has changed course in case T 1063/18, which was decided on 5 December 2018. The case in question concerned a patent application EP 2753168 entitled “New pepper plants and fruits with improved nutritional value”. The application had been rejected by the examining division in accordance with the amended Rules 27 and 28 EPC. The decision of the examining division was appealed to the Board of Appeal, which found that the newly amended Rules 27 and 28 EPC are in contradiction with Article 53(b) EPC.

Article 53(b) EPC provides exceptions to patentability. The provision states that “European patents shall not be granted in respect of: […] (b) plant or animal varieties or essentially biological processes for the production of plants or animals; this provision shall not apply to microbiological processes or the products thereof.” The article excludes essentially biological processes from patentability but does not provide for an exclusion for the products thereof. A comprehensive interpretation of this provision was provided in the Tomato and Broccoli cases, which include an extensive and detailed examination related to the interpretation of the Article.

According to the decision by the Board of Appeal in T 1063/18, Article 164(2) EPC entails that in case of conflict between Articles and Rules of EPC, the EPC Articles shall prevail. This could mean that plant products that are produced by essentially biological processes will be considered patentable under Article 53(b) EPC. However, the Board of Appeal did not decide on the patentability of the invention in question, but the case was remitted back to the examining division for further examination. It will be interesting to see what the final result will be and how the saga related to patentability of plant products will unfold. The written reasoned decision in case T 1063/18 will be published in the beginning of this year.