Pepper gets spicy: The EPO President's Referral to the EBA

True to his promise to the Administrative Council (AC) (IPKat post here), the President of the EPO has now referred the "Pepper" question to the Enlarged Board of Appeal (EBA): are plant products produced by essentially biological processes patentable? The President's Referral can be seen here. 

The President's referral follows swiftly from the Board of Appeal (BA) decision in T 1063/18 (Pepper). For the full background to the case see IPKat post here. In summary, the EBA found in G 2/12 (Broccoli/Tomato II) that Article 53(b) did not exclude plants produced by essentially biological processes from patentability. The European Commission subsequently issued a notice of the (non-legally binding) opinion that the biotech directive excluded plants produced by essentially biological processes from patentability. In response, the Administrative Council (AC) amended Rule 28 EPC to explicitly exclude plants produced by essentially biological processes from patentability.

The BA in T 1063/18 (Pepper) found that the AC's interpretation of Article 53(b) EPC by amendment of Rule 28(2) EPC was in conflict with the prior interpretation of the Article by the EBA in G 2/12 (Broccoli/Tomato II). The Board in T 1063/18 (Pepper) found that the AC Rule amendment was void. The Board in T 1063/18 (Pepper) also did not feel it necessary to refer the issue to the EBA, reasoning that the EBA had already decided on the question in G 2/12 (Broccoli/Tomato II).  

Prior to the publication of the President's referral, many commented that any such referral would be inadmissible. First the EBA had already decided on the issue in G 2/12 (Broccoli/Tomato II). Second, there were no conflicting BA decisions to justify the Referral.

The EPO President may refer a question to the EBA under Article 112 EPC: 

the President of the European Patent Office may refer a point of law to the Enlarged Board of Appeal where two Boards of Appeal have given different decisions on that question. 

Two Boards of Appeal have not given different decisions on the question of the patentabiltiy of plant products produced by essentially biological processes. CIPA recently issued a position paper on the issue. CIPA argued that there are no valid grounds for the EBA to accept another referral on the interpretation of Article 53(b) EPC in the absence of different decisions from the BAs. So how is the President attempting to get around the requirement for there to be conflicting decisions of the BA for a referral?

The President has referred two questions to the EBA. The first question relates to limitations of the power of the AC to interpret the Article of the EPC by amending the rules:

Question 1

"Having regard to Article 164(2) EPC, can the meaning and scope of Article 53 EPC be clarified in the Implementing Regulations to the EPC without this clarification being a priori limited by the interpretation of said Article given in an earlier decision of the Boards of Appeal or the Enlarged Board of Appeal?"

In the referral, the President first addressed the question of whether two Boards of Appeal have given different decisions on the point of law relevant to this first question. Particularly, have two boards differed in deciding whether an Article can be clarified by the Rules in a way that conflicts with prior interpretations by the BAs or EBA? 

In the next question, the President refers the issue of the interpretation of Article 53(b) EPC itself:

Question 2

"If the answer to question 1 is yes, is the exclusion from patentability of plants and animals exclusively obtained by means of an essentially biological process pursuant to Rule 28(2) EPC in conformity with Article 53(b) EPC which neither explicitly excludes nor explicitly allows said subject-matter?"

The President argued for the admissibility of Question 2 by way of a broad interpretation of Article 112(1)(b) EPC. 

Admissibility of Question 1

The President argued in the referral that previous decisions of the BA conflict with T 1063/18 (Pepper) on the issue of Question 1. Particularly, the President argued that there are conflicting BA decisions on whether an EBA interpretation of an Article limits the ability of the AC to interpret the same Article. In T 1063/18 (Pepper), the Board found that a new Rule giving an interpretation of an Article, that was in conflict with the EBA's interpretation of the Article, was void. The President argued that there were previous BA and EBA decisions in conflict with this position. 

The President cited decisions T 315/03  and T 272/95 as being different to T 1063/18 (Pepper) on the issue of limits to the power of the AC to interpret the Articles. In T 315/03 and T 272/95, the Boards acknowledged the AC's competence to interpret the Articles using the rules (under Article 33(1) EPC). The Board in T 315/03 also noted that further interpretation of the Article in question by case-law or by legislation, was not prevented by anything in the Article itself: "one cannot combine a legislative provision with case-law interpretation to construct an artificial vires by which to judge an action or rule as ultra vires". 

However, this Kat notes that T 315/03 only considered whether an earlier interpretation by a BA (as opposed to the EBA) limits further interpretation by AC amendment of the rules (Article 33(1) EPC). T 272/95 also did not consider the case in which interpretation of an Article by amendment of the Rules conflicted with a prior interpretation of the Article by the EBA. T 1063/18 (Pepper) relates to an interpretation of an Article by the EBA. 

The President further pointed out that in G 2/07, the EBA differed from T 1063/18 (Pepper). Particularly, the President argued that the EBA did not endorse the reasoning of the previous decision (T 39/93). The BA in T 39/93 found that interpretation of an Article by the EBA would a priori preclude its clarification by means of a new Rule. 

The President faces at least 2 potential objections. First, G 2/07 is an EBA decision, not a BA decision as required for a referral by Article 112 EPC. Taking a look at the quoted section of G 2/07, it also seems to this Kat that the EBA in G 2/07 merely "does not endorse" the reasoning leading to the conclusion that there was a conflict between the EBA and a new rule in the case in question. This is a different situation to T 1063/18 (Pepper), which considered how such a conflict (that clearly existed) should be resolved. 

The President concluded that T 1063/18 (Pepper) differs from other decisions of the Boards. Particularly, the President argues that T 1063/18 (Pepper) is in conflict with previous decisions on how to resolve a conflict between the interpretation of an Article by the EBA (or BA) and a subsequent interpretation of the same Article by the AC. The President thus argued that Question 1 is admissible. 

Admissibility of Question 2

No Boards have so far conflicted with T 1063/18 (Pepper) on the issue of whether Rule 28 EPC excludes plants produced by essentially biological processes. It seems therefore that, in view of the explicit wording of Article 112 EPC, Question 2 of the referral is inadmissible. However, the President argued that the referral is admissible "by analogy".

Antonio Campinos

The President argued that there is no general principle, or case law from the EBA, that Article 112(1)(b) EPC should be interpreted in a restrictive manner. The President further argued that the effect of  T 1063/18 is equivalent to a situation where two Boards have given different decisions. Particularly, the President argued there is no legal basis for the EPO, e.g. the examining division, to not apply the amended Rule on the basis of a single decision by a BA (in the absence of a decision from the EBA). The President concluded that his referral is necessary. Particularly, the President concluded that it was impossible for the EPO to bring its practices in line with law resulting from a conflict between a Rule and a single BA. 

It seems that the nub of the issue here is whether the Rule is really only in conflict with just a single TBA decision or whether the Rule is in conflict with the highest judicial authority of the EPO, the EBA. Many commentators have argued that the legal situation is clear: plants produced by essentially biological processes are patentable. This position was made clear by the EBA in G 2/12 (Broccoli/Tomato II). It was the AC who first produced legal uncertainty by amendment of the Rule in contradiction to a decision by the EBA. The President, far from alleviating uncertainty, is adding to it by asking the EBA to consider a question they have already considered. 

The President acknowledges that the purpose of the "different decision" criteria of Article 112(1)(b) EPC was to prevent the President referring questions in order to clarify abstract points of law. The President argued that Question 2 does not relate to an abstract point of law, "but a concrete question". This, the President reasoned, is evidenced by the number of pending appeals, applications and oppositions relating to the question. 

Even if the EBA finds Question 2 inadmissible, the EBA may still consider the question (as in G 3/08, Programs for computers). However, as in G 3/08, the EBA may merely reiterate their previous view, i.e. that plants produced by essentially biological processes are patentable under Article 53(b) EPC (G 2/12, Broccoli/Tomato II). 

This Kat is keen to hear readers thoughts on the admissibility (or otherwise) of the President's referral. The President comments in his referral that "settling the point of law by a de facto binding decision of the Enlarged Board of Appeal is...of great interest and importance for applicants" [Merpel: but only where the law is settled according to the view of the AC and the President?].