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. 
BREAKING: President to refer the patentability of plants produced by essentially biological processes to the EBA BREAKING: President to refer the patentability of plants produced by essentially biological processes to the EBA Reviewed by Rose Hughes on Monday, April 01, 2019 Rating: 5


  1. The suggested referral does not change the fact that G 2/12 and G 3/12 exist, and what that the AC and the President want is for the EBA to revise its case law.

    Where is the claimed legal uncertainty? In T 1063/18, the BA has considered that the amendment of R 28, which was carried out in the wake of an opinion of the EU Commission, not even a decision of the CJEU, was against the interpretation of the EPC by the EBA in decisions G 2/12 and G 3/12.

    A referral would only be legitimate if a different BA, or even the same BA, but in a different composition, would arrive at the opposite conclusion of T 1063/18. The possibility for the President of the EPO to refer questions to the EBA should not be misused for political reasons.

    The only time the EBA changed its case law was in case of an opposition by the proprietor himself. In G 1/84, such an opposition was admissible. From G 9/93 onwards, such an opposition was not any longer possible. The route to this change of case law was prepared in decisions G 9/91 and G 10/91, according to which the opposition is a contentious procedure between a proprietor and at least one opponent. In the meantime, the opponent has the possibility to, limit its patent, cf. Art 105 a), b), c), so all those decisions are not any longer relevant. .

    The first question to ask is whether such a referral is at all admissible. There is no change or divergent case law of the Boards. Why should the EBA say anything different from what it said before?

    The envisaged referral actually requires the Enlarged Board to disregard its own case law. If G 3/08, the referral of Mrs Brimelow about CII (to please judges in her home country), was considered not admissible, this referral is even less admissible.

    I hope that the EBA will resist this attempt to influence it, as it resisted the attempts of the predecessor of the present president in G2301/15 and G 2302/15.

    The only way to change the situation is to amend Art 53, b). But this is a solution which is more complicated and not so easy to implement. But this is the only “clean” solution. The AC and the President should have the courage to use the correct means to incorporate any societal change into the EPC.

    After all the EPO has lots of important member states, which are not member of the EU, and the 27(28?) member states of the EU should not impose their views on the non-EU member states. If all member states of the EPO agree, and the correct procedure is applied, then there is nothing to say, but any attempt to influence the case law of the EBA should be resisted.

    And then the EPO expects the complaints before the German Federal Constitutional Court re independence of the Boards of Appeal to be dismissed, and the complaint about the UPC not to be admitted!

    If a supplementary proof of the lack of independence of the BA was needed, here it is.

    If the EBA has to decide according to the wishes of the President of the EPO and of the AC, then it might be more honest to decide that the EBA has not any longer the power to interpret the EPC, and any the decision of the management of the EPO and/or of the AC has to be executed.

    I am curious to see what reasons for the referral will be brought up by the lawyers working for president of the EPO.

    I have rarely seen such an outrageous behaviour!

    The AC really seems wanting to see a repeat of what happened in G 2301/15 and G 2302/15.

    Techrights: FINGERS OFF!! Directly or indirectly!!

  2. It may be of interest to learn that CIPA has expressed its views on the tactic of a referral by the President under Article 112(1)(b) EPC. ( To quote:

    "Our position is that there are presently are no valid grounds upon which the EBA could accept a referral the President under Article 112(1)(b) EPC with respect to the interpretation of Article 53(b) EPC. The EBA has already provided a binding interpretation of Article 53(b) EPC, meaning that there are no “different” (i.e. conflicting) decisions of Boards of Appeal that might form the basis of a referral under Article 112(1)(b) EPC"; and

    "in our view, there are no valid grounds for disputing the Board of Appeal’s conclusion that the above-mentioned EC Notice (i.e. the Notice upon which Rule 28(2) EPC was based) has no legal authority under the EPC".

  3. Absolutely agree with @Attentive Observer and @Mike Snodin - the referral should be inadmissible.

    The only legally "clean" way for this to be resolved is for the Biotech Directive 98/44/EC to be amended - at that point the AC could use Art 33(1)(b) EPC to amend Art 53(b) EPC to bring it into line with the amended Biotech Directive. That does, however, requires unanimity of all EPC contracting states.

    This is a political issue, and the big question is: why it is happening this way? If *all* EPC contracting states (therefore also implying all EU member states) wanted the EPC to be amended then it would be relatively simple and easy to make the necessary changes to the Biotech Directive and the EPC.

    Do the events at the EPO imply some kind of political problem? A lack of unanimity? As ever, it would be fascinating to find out exactly what is actually going on behind the scenes...


All comments must be moderated by a member of the IPKat team before they appear on the blog. Comments will not be allowed if the contravene the IPKat policy that readers' comments should not be obscene or defamatory; they should not consist of ad hominem attacks on members of the blog team or other comment-posters and they should make a constructive contribution to the discussion of the post on which they purport to comment.

It is also the IPKat policy that comments should not be made completely anonymously, and users should use a consistent name or pseudonym (which should not itself be defamatory or obscene, or that of another real person), either in the "identity" field, or at the beginning of the comment. Current practice is to, however, allow a limited number of comments that contravene this policy, provided that the comment has a high degree of relevance and the comment chain does not become too difficult to follow.

Learn more here:

Powered by Blogger.