EPO's Administrative Council powerless to amend the EPC: The latest on T 1063/18

The IPKat recently reported on the EPO board of appeal decision on the patentability of plant products produced by essentially biological processes, a decision mired in political controversy. The Board ruled that Rule 28(2) EPC, excluding plant products produced by essentially biological processes from patentability was void in view of the Enlarged Board of Appeal (EBA) decision in Broccoli/Tomatoes II (G2/12 and G2/13) (IPKat post here). Rule 28(2) EPC was introduced by the EPO Administrative Council (AC) following a Notice from the EU commission that plant products produced by essentially biological processes are not patentable under the Biotech Directive (Directive 98/44/EC) (IPKat post here). 

The written decision of the technical board of appeal (TBA) has now been issued - here. Minutes of the oral proceedings - here.

The technical board of appeal (TBA)'s position is unequivocal: the AC does not have the power to amend the EPC using the Rules. The Enlarged Board of Appeal (EBA)'s interpretation of the Articles is binding on Board of Appeals (BA), unless the BA has reason to refer the issue again to the EBA. Here is a brief summary of some interesting points covered in the decision.

The  application (EP2753168) relates to a new pepper

Is the TBA bound by the EBA's interpretation of the Articles?

In reviewing the history of the case, and in particular the contradiction between Rule 28 (2) and Article 53(b) EPC, the TBA noted that, whilst decisions of the EBA are only binding with respect of the appeal which gave rise to the referral, "these decisions have a de facto binding effect on the Boards of Appeal, up to the point at which they consider it necessary to deviate from them, at which point they must refer the question to the EBA" (r. 20).

The TBA further noted that the EBA's interpretation of the EPC effectively has a retroactive effect "and implies that the law should always have been read in conformity with that interpretation". The interpretation should thus be applied to all pending and future cases before the EPO (r. 21).

The TBA also roundly dismissed the reasoning of the Examining Division in the case that new Rule 28(2) EPC merely provided clarification to the scope of Article 53(b). The TBA found the meaning of the rule to be in clear conflict with Article 53(b) as interpreted by the EBA (r. 23). The TBA further found that the contradiction between Rule 28(2) and the interpretation of Article 53(b) by the EBA was such that it could not be resolved by way of interpretation (r. 24).

Were there reasons for the TBA to deviate from the EBA's interpretation of the Articles?

The TBA also addressed the question as to whether there were reasons to deviate from Broccoli/Tomatoes II (G2/12 and G2/13). Particularly, the Board noted that the powers of the Administrative Council to lay down the law by means of the Implementing Regulations are limited by Article 164(2) EPC. This provision states that the Articles shall prevail over the rules. As such, the TBA concluded that it had to apply Broccoli/Tomatoes II (G2/12 and G2/13) unless it had reasons to refer the decision for reconsideration by the EBA.

The TBA further noted that whilst the AC has the power to amend the Articles of the EPC under Article 33(1)(b) EPC, the AC is not competent to amend the EPC by means of amendment of the implementing regulations (r. 33-35). The Board roundly dismissed the Notice from the EU Commission on the interpretation of the Biotech directive as providing any reason for referring the question to the EBA, given that it lacked any legal authority.

The TBA also considered the third party submissions to proceedings regarding the negative effects of plant patents on the interests of plant breeders.  However, the TBA noted that such considerations are for the legislative body and "cannot play a role in the legal assessment of the issues raised in the present case".

The Board set aside the appealed decision and remitted the case back to the Examining Division.

The TBA decision makes it clear that the Board did not feel it necessary to refer the question back to the EBA at this stage.  It seems we can expect future boards to follow the TBAs approach in this case. How will the EPO now respond? The IPKat will keep you updated with developments.