BREAKING: President to refer the patentability of plants produced by essentially biological processes to the EBA

According to an EPO press release (here), the President of the EPO (Antonio Campinos) is planning to refer the question of the patentability of plants produced by biological processes to the Enlarged Board of Appeal (EBA). The EPO statement followed a meeting of the Administrative Council, at which the legal uncertainty arising from the board of appeal decision in T 1063/18 was discussed.

Case Background

For the full case background to T 1063/18, see IPKat post here. In summary, in 2017 the Administrative Council of the EPO amended Rule 28 EPC in response to an opinion from the European Commission on the patentability of plant and animal products produced by essentially biological processes (IPKat post here). In T 1063/18, the Board of Appeal found that amended Rule 28(2) EPC is in conflict with Article 53(b) EPC as interpreted by the EBA in G 2/12 (Broccoli/Tomato II). The Board set aside the decision by the Examining Division that a claim directed to a pepper plant was not patentable.

In the written decision of T 1063/18 (IPKat post here), the Board observed 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 G 2/12 (Broccoli/Tomato II).

The Board in T 1063/18 also observed that they saw no reason to refer the case to he EBA. In particular the Board observed at r.39:

"The EBA has given an interpretation of Article 53(b) EPC from which the board sees no reason to deviate. Furthermore, no point of law arises in relation to the course of action in case of a conflict between a Rule of the Implementing Regulations and an Article of the Convention because this situation is governed by Article 164(2) EPC. For these reasons a referral under Article 112(1)(a) EPC is not justified."

Referral by the President?

According to Article 112 EPC, the President of the EPO may refer a point of law to the EBA, in order to ensure uniform application of the law, or if a point of law of fundamental importance arises,"where two Boards of Appeal have given different decisions on that question".

Unless this Kat has missed something, there have not been conflicting decisions from the TBAs on the issue of the products produced by essentially biological processes since the issue was determined in G 2/12 (Broccoli/Tomato II). So on what grounds could the issue be referred by the President?

According to the EPO press release:

Antonio Campinos

"The Contracting States expressed their concerns with regard to the legal uncertainty caused by decision T 1063/18. The President of the EPO expressed his view that a President's referral of the case to the Enlarged Board of Appeal is justified and necessary. The aim is to obtain an opinion from the Enlarged Board of Appeal on the patentability of plants exclusively obtained by essentially biological processes, hereby considering recent legal developments (interpretations and statements of the European Commission, the EU Council, European Parliament and EPO's Administrative Council on the interpretation of the European Patent Convention and the EU Bio-Directive, all of them concluding that there should be no patentability in these cases)."

However, according to the Case Law of the Boards of Appeal (2.4.3):

"the notion "different decisions" has to be understood restrictively in the sense of "conflicting decisions". Legal development is an additional factor which must be carefully considered. Development of the law is an essential aspect of its application and inherent in all judicial activity. Consequently, legal development as such cannot on its own form the basis for a referral, because case law does not always develop in linear fashion, and earlier approaches may be abandoned or modified."

Furthermore, according to G 4/98, a discrepancy between Office practice of the EPO and the case law of the boards of appeal is not in itself sufficient to justify a referral by the President, unless the practice of the EPO is warranted by the case law.

It is also noted that the EBA has form in finding referrals by the President as inadmissible in the absence of conflicting decisions from the Boards of Appeal (e.g. G 3/95). The case law therefore suggests that any referral by the President, citing legal developments such as statements from the European Commission, is unlikely to be accepted by the EBA. In fact, it seems highly probable that the EBA will consider the issue to have already been fully decided in G 2/12 (Broccoli/Tomato II).

None-the-less, the President's proposal apparently "received  broad and overwhelming support from almost all Contracting States". The President's thus plans to "proceed swiftly to submit the referral".

Stay tuned to IPKat for further developments.