The Enlarged Board of Appeal (EBA) decision in G3/19 is a beautiful example of legal fudge. G3/19 brings to an end the see-sawing the EPO has experienced in recent years over the issue of the patentability of plants and animals produced by essentially biological processes. Since the EBA decision in G2/12 (Broccoli/Tomato II), the EBA/Board of Appeals on one side and the Administrative Council (AC) on the other side have striven for dominance on this issue. The EBA in G2/12 (Broccoli/Tomato II) found products produced by natural processes to be patentable. The AC subsequently introduced Rule 28(2) EPC to exclude products produced by natural processes from patentability. In G3/19, the EBA has now acquiesced to the AC's interpretation of the Articles over its own previous view. However, the EBA also made a judicious amendment to the questions referred to it by the President. In doing so, the EBA not only shifted the ground on the question of the admissibility of the referral, but also clearly wished to avoid having to fully consider the appropriateness of the AC amendment to the Rules.
Case Background
In G2/12 (Broccoli/Tomato II) the EBA found that Article 53(b) EPC did not exclude plant and animal products produced by essentially biological (i.e. natural) processes from patentability. In particular, the EBA found that Article 53(b) EPC only explicitly excluded essentially biological processes themselves from patentability, not the products of these processes (IPKat here).
The EBA's decision in G2/12 (Broccoli/Tomato II) was not popular with some. The EU Biotech Directive has equivalent wording to Article 53(b) EPC. The EU Commission provided a (non-legally binding) opinion that the EU Biotech Directive excluded products produced by natural processes from patentability. The AC further amended the Rules of the EPC to include Rule 28(2) EPC (IPKat here). This new Rule explicitly stated that products produced by natural processes were excluded from patentability. Making amendments to the rules is easier than amending the Articles of the EPC. Amendments to the Articles must be unanimously supported by the contracting states of the EPC (Article 172 EPC), or require a full diplomatic conference. New Rule 28(2) EPC was in conflict with the EBA's interpretation of Article 53(b) EPC in G2/12 (Broccoli/Tomato II). The action of the AC therefore raised the question of whether the introduction of Rule 28(2) EPC was really an amendment to the Articles by the backdoor.
In T 1063/18 (Pepper) the Board of Appeal found that Rule 28(2) EPC was in conflict with the prior interpretation of Article 53(b) EPC by the EBA in G2/12 (Broccoli/Tomato II). The Board of Appeal in Pepper consequently found that Rule 28(2) EPC was void. The Board of Appeal in 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 G2/12 (Broccoli/Tomato II) (IPKat here).
Following pressure from the AC, the President subsequently referred the question of the patentability of plants produced by essential biological processes to the EBA.
Re-phrasing the questions
The EPO President referred two questions to the EBA. The President's first question effectively asked whether the AC is permitted to amend the Rules of the EPC so as to be in conflict with previous interpretations of the Articles by the EBA1.
The EBA considered this question too broad, referring as it did to the general question of the competencies of the AC and EBA. The EBA didn't feel it was necessary to answer such a question. To the EBA, the real issue of the referral was to address the question of the patentability of natural plant and animal products. The EBA further noted that were they to answer "yes" to the President's first question, this would effectively give the AC "carte blanche to deviate from established case law and give a particular meaning to any Article of the EPC by means of the Rules of the Implementing Regulations. This would open the door to the possibility of circumventing the statutory procedures for amending the Convention itself". So instead of answering either yes or no, the EBA decided it would be pertinent to re-phrase the question. The EBA therefore combined the President's questions into a single re-phrased question relating to whether the meaning of the Articles could change over time in view of changes to the Rules2.
Admissibility of the Question
To be admissible, a referral from the President to the EBA must relate to a point of law of fundamental importance (Article 112(1) EPC). The EBA acknowledged that the point of law was of fundamental importance because of the wish of the legislator to harmonise the EPO's and EU's approach to biotech inventions.
A second requirement for admissibility is that a referral from the President's to the EBA should relate to a question on which there are conflicting Board of Appeal decisions (Article 112(1) EPC). The Board of Appeal was clear in T 1063/18 (Pepper) that new Rule 28(2) EPC was in contradiction to the previous interpretation of Article 53(c) EPC in G2/12 (Broccoli/Tomato II). Thus the Board of Appeal found that the AC was not competent to amend Article 53(c) EPC by means of Rule 28(2) EPC.
The EBA cited T 272/95 as a conflicting decision to T 1063/18 (Pepper). In T 272/95 the Board of Appeal considered the situation in which the AC had amended the Rules (23b and 23a) in view of the EU Biotech Directive. The Board of Appeal examined the conformity of the new Rules with Article 53(b) EPC. The new Rules were found to be interpretative with respect to Article 53(b) EPC. The EBA argued that this case was an example of a Board of Appeal decision in which new Rules were found to change a previous interpretation of the Articles.
The EBA concluded that there were thus conflicting decisions from the Boards of Appeal on the question of whether an amendment to the Rules can have an impact on the interpretation of the Articles. The President's referral was therefore found admissible. However, it is worth remembering that the EBA was considering the admissibility of its own re-phrased question as opposed to the President's original questions.
Grammatical, systematic and teleological interpretation of Article 53(c) EPC
Simply put, the EBA's question asked to what extent the interpretation of Article 53(b) EPC may have been changed since G2/12 (Broccoli/Tomato II) by the AC's introduction of Rule 28(2) EPC. The EBA first reiterated its previous position from G2/12 on the "grammatical, systematic and teleological" interpretation of Article 53(b) EPC. Namely, the EBA interpreted the wording of the Article as clearly excluding essentially biological processes from patentability but not the products of such processes.
The EBA further confirmed that the opinion of the EU commission on the interpretation the EU Biotech Directive was not legally binding on either the EU or EPO. The EU commission had itself accepted that only the CJEU is competent to interpret Union law. As the EBA noted, "to date, no decision concerning the exception to patentability in respect of animals, plants or plant materials obtained by an essentially biological process and the interpretation of Article 4 EU Biotech Directive has been handed down by the CJEU". The EBA also pointed out that the EPO is independent of the EU, and thus not bound by Union law:
The EBA was further of the opinion that the actions of roughly a quarter of the EPC member states to amend their national legislature to exclude products produced by natural process from patentabilty, was irrelevant. In particular, such actions did not themselves amount to an agreement between the contracting states on the interpretation of Article 53(b) EPC.
Dynamic interpretation of Article 53(c) EPC
The EBA therefore stood by its originally interpretation of Article 53(b) EPC in G2/12 (Broccoli/Tomato II). The EBA further dismissed the arguments that the EU commission Notice or the actions of individual member states of the EPC should have any influence on this interpretation. But the AC and EPO President wanted a different answer to the one given in G2/12. How to square this circle? The answer: "dynamic interpretation". The EBA reasoned that particular interpretation of the Articles are not "carved in stone", but should be subject to later developments, "be they legal, or even practical or factual". Therefore, EBA found that:
"although neither the Contracting States, in accordance with Article 172 EPC, nor the Administrative Council, in accordance with Article 33(1)(b) EPC, has formally amended Article 53(b) EPC to extend the scope of the process exclusion to animals, plants and plant material obtained by essentially biological processes, when now interpreting Article 53(b) EPC, the Enlarged Board cannot ignore the Administrative Council's decision to introduce a new paragraph 2 in Rule 28 EPC"
But did the AC not over-reach its powers when making the Rule 28(2) amendment? The EBA did not think so. First, the EBA could not see any general prohibition preventing the introduction of Rules that interpreted the Articles. The argument was presented in the amicus curaie that legislative decisions on matters of fundamental importance should not be left to administrative bodies to make by means of administrative regulations, i.e. by the AC amending the Rules. The EBA disagreed. In particular, the EBA argued that the AC had the power to amend Article 53(b) EPC using its powers, for example, under Articles 33(1)(b) and 35(3) EPC. According to Article 33(1)(b) the AC may amend the EPC in order to bring it in line with an international treaty, following an unanimous vote of the AC (Article 35(3) EPC). However, notably, the conditions for a Article 33(1)(b) amendment (e.g. unanimous approval from all contracting states) were not satisfied in the AC vote that introduced Rule 28(2).
Furthermore, the EBA considered the issue moot in view of the re-phrased question. The re-phrased question no longer related to the introduction of Rule 28(2) EPC. Instead the question focused on the issue of whether the EBA could change its mind on the interpretation of an Article. The EBA thus wished to dodge the thorny issue of whether the Rule 28(2) EPC amendment was appropriate. Instead, the EBA merely considered whether Rule 28(2) EPC changed how the EBA should interpret Article 53(b) EPC.
The EBA found that, in introducing Rule 28(2) EPC, it was the clear intention of the contracting states to exclude plant and animal products produced by natural process from patentability:
"the introduction of Rule 28(2) EPC, the legal and factual situation underlying decision G 2/12 (supra) has substantially changed. This amendment constitutes a new aspect or consideration which has arisen since the EPC was signed which may give reason to believe that a grammatical, and restrictive, interpretation of the wording of Article 53(b) EPC conflicts with the legislator's aims, whereas a dynamic interpretation may bring a result that diverges from the wording of the law".
Whilst it stood by its previous interpretation of the normal meaning of the words in Article 53(b) EPC as not providing for the exclusion, the EBA found that this did not prohibit a "broader understanding" of the Article. As such, the EBA reasoned that the wording of Article 53(b) EPC was not incompatible with Rule 28(2) EPC. The EBA concluded:
"The Enlarged Board accordingly abandons the interpretation of Article 53(b) EPC given in decision G 2/12 (supra) and, in the light of Rule 28(2) EPC, holds that the term "essentially biological processes for the production of plants or animals" in Article 53(b) EPC is to be understood and applied as extending to products exclusively obtained by means of an essentially biological process or if the claimed process feature defines an essentially biological process."
Final thoughts
The EBA's decision in G3/19 can be simply summarised as follows.
EBA: Article means P (under a grammatical, systematic and teleological interpretation)
AC: The New Rule changes meaning of Article to Q.
EBA: Because of the New Rule, Article now means Q.
Therefore, whilst the EBA rephrased the referred questions so as to not consider the appropriateness of Rule 28(2) EPC, G3/19 still seems to none-the-less open the door to the AC to change the EPC by amending the Rules, without unanimous agreement from the contracting states or a diplomatic conference. Finally, the fudging by the EBA to reach its decision in G3/19 will raise questions as to its functioning as an independent body, free from the political influence of the President and AC.
_____________________________________________________________________
1The President's Referred Questions
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?
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?
2The EBA's Re-phrased Question
Taking into account developments that occurred after a decision by the EBA giving an interpretation of the scope of the exception to patentability of essentially biological processes for the production of plants or animals in Article 53(b) EPC, could this exception have a negative effect on the allowability of product claims or product-by-process claims directed to plants, plant material or animals, if the claimed product is exclusively obtained by means of an essentially biological process or if the claimed process feature define an essentially biological process?
Case Background
In G2/12 (Broccoli/Tomato II) the EBA found that Article 53(b) EPC did not exclude plant and animal products produced by essentially biological (i.e. natural) processes from patentability. In particular, the EBA found that Article 53(b) EPC only explicitly excluded essentially biological processes themselves from patentability, not the products of these processes (IPKat here).
The EBA's decision in G2/12 (Broccoli/Tomato II) was not popular with some. The EU Biotech Directive has equivalent wording to Article 53(b) EPC. The EU Commission provided a (non-legally binding) opinion that the EU Biotech Directive excluded products produced by natural processes from patentability. The AC further amended the Rules of the EPC to include Rule 28(2) EPC (IPKat here). This new Rule explicitly stated that products produced by natural processes were excluded from patentability. Making amendments to the rules is easier than amending the Articles of the EPC. Amendments to the Articles must be unanimously supported by the contracting states of the EPC (Article 172 EPC), or require a full diplomatic conference. New Rule 28(2) EPC was in conflict with the EBA's interpretation of Article 53(b) EPC in G2/12 (Broccoli/Tomato II). The action of the AC therefore raised the question of whether the introduction of Rule 28(2) EPC was really an amendment to the Articles by the backdoor.
In T 1063/18 (Pepper) the Board of Appeal found that Rule 28(2) EPC was in conflict with the prior interpretation of Article 53(b) EPC by the EBA in G2/12 (Broccoli/Tomato II). The Board of Appeal in Pepper consequently found that Rule 28(2) EPC was void. The Board of Appeal in 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 G2/12 (Broccoli/Tomato II) (IPKat here).
Following pressure from the AC, the President subsequently referred the question of the patentability of plants produced by essential biological processes to the EBA.
Re-phrasing the questions
 |
| EBA fudges Pepper |
The EPO President referred two questions to the EBA. The President's first question effectively asked whether the AC is permitted to amend the Rules of the EPC so as to be in conflict with previous interpretations of the Articles by the EBA1.
The EBA considered this question too broad, referring as it did to the general question of the competencies of the AC and EBA. The EBA didn't feel it was necessary to answer such a question. To the EBA, the real issue of the referral was to address the question of the patentability of natural plant and animal products. The EBA further noted that were they to answer "yes" to the President's first question, this would effectively give the AC "carte blanche to deviate from established case law and give a particular meaning to any Article of the EPC by means of the Rules of the Implementing Regulations. This would open the door to the possibility of circumventing the statutory procedures for amending the Convention itself". So instead of answering either yes or no, the EBA decided it would be pertinent to re-phrase the question. The EBA therefore combined the President's questions into a single re-phrased question relating to whether the meaning of the Articles could change over time in view of changes to the Rules2.
Admissibility of the Question
To be admissible, a referral from the President to the EBA must relate to a point of law of fundamental importance (Article 112(1) EPC). The EBA acknowledged that the point of law was of fundamental importance because of the wish of the legislator to harmonise the EPO's and EU's approach to biotech inventions.
A second requirement for admissibility is that a referral from the President's to the EBA should relate to a question on which there are conflicting Board of Appeal decisions (Article 112(1) EPC). The Board of Appeal was clear in T 1063/18 (Pepper) that new Rule 28(2) EPC was in contradiction to the previous interpretation of Article 53(c) EPC in G2/12 (Broccoli/Tomato II). Thus the Board of Appeal found that the AC was not competent to amend Article 53(c) EPC by means of Rule 28(2) EPC.
The EBA cited T 272/95 as a conflicting decision to T 1063/18 (Pepper). In T 272/95 the Board of Appeal considered the situation in which the AC had amended the Rules (23b and 23a) in view of the EU Biotech Directive. The Board of Appeal examined the conformity of the new Rules with Article 53(b) EPC. The new Rules were found to be interpretative with respect to Article 53(b) EPC. The EBA argued that this case was an example of a Board of Appeal decision in which new Rules were found to change a previous interpretation of the Articles.
The EBA concluded that there were thus conflicting decisions from the Boards of Appeal on the question of whether an amendment to the Rules can have an impact on the interpretation of the Articles. The President's referral was therefore found admissible. However, it is worth remembering that the EBA was considering the admissibility of its own re-phrased question as opposed to the President's original questions.
Grammatical, systematic and teleological interpretation of Article 53(c) EPC
Simply put, the EBA's question asked to what extent the interpretation of Article 53(b) EPC may have been changed since G2/12 (Broccoli/Tomato II) by the AC's introduction of Rule 28(2) EPC. The EBA first reiterated its previous position from G2/12 on the "grammatical, systematic and teleological" interpretation of Article 53(b) EPC. Namely, the EBA interpreted the wording of the Article as clearly excluding essentially biological processes from patentability but not the products of such processes.
The EBA further confirmed that the opinion of the EU commission on the interpretation the EU Biotech Directive was not legally binding on either the EU or EPO. The EU commission had itself accepted that only the CJEU is competent to interpret Union law. As the EBA noted, "to date, no decision concerning the exception to patentability in respect of animals, plants or plant materials obtained by an essentially biological process and the interpretation of Article 4 EU Biotech Directive has been handed down by the CJEU". The EBA also pointed out that the EPO is independent of the EU, and thus not bound by Union law:
The EBA was further of the opinion that the actions of roughly a quarter of the EPC member states to amend their national legislature to exclude products produced by natural process from patentabilty, was irrelevant. In particular, such actions did not themselves amount to an agreement between the contracting states on the interpretation of Article 53(b) EPC.
Dynamic interpretation of Article 53(c) EPC
The EBA therefore stood by its originally interpretation of Article 53(b) EPC in G2/12 (Broccoli/Tomato II). The EBA further dismissed the arguments that the EU commission Notice or the actions of individual member states of the EPC should have any influence on this interpretation. But the AC and EPO President wanted a different answer to the one given in G2/12. How to square this circle? The answer: "dynamic interpretation". The EBA reasoned that particular interpretation of the Articles are not "carved in stone", but should be subject to later developments, "be they legal, or even practical or factual". Therefore, EBA found that:
"although neither the Contracting States, in accordance with Article 172 EPC, nor the Administrative Council, in accordance with Article 33(1)(b) EPC, has formally amended Article 53(b) EPC to extend the scope of the process exclusion to animals, plants and plant material obtained by essentially biological processes, when now interpreting Article 53(b) EPC, the Enlarged Board cannot ignore the Administrative Council's decision to introduce a new paragraph 2 in Rule 28 EPC"
But did the AC not over-reach its powers when making the Rule 28(2) amendment? The EBA did not think so. First, the EBA could not see any general prohibition preventing the introduction of Rules that interpreted the Articles. The argument was presented in the amicus curaie that legislative decisions on matters of fundamental importance should not be left to administrative bodies to make by means of administrative regulations, i.e. by the AC amending the Rules. The EBA disagreed. In particular, the EBA argued that the AC had the power to amend Article 53(b) EPC using its powers, for example, under Articles 33(1)(b) and 35(3) EPC. According to Article 33(1)(b) the AC may amend the EPC in order to bring it in line with an international treaty, following an unanimous vote of the AC (Article 35(3) EPC). However, notably, the conditions for a Article 33(1)(b) amendment (e.g. unanimous approval from all contracting states) were not satisfied in the AC vote that introduced Rule 28(2).
Furthermore, the EBA considered the issue moot in view of the re-phrased question. The re-phrased question no longer related to the introduction of Rule 28(2) EPC. Instead the question focused on the issue of whether the EBA could change its mind on the interpretation of an Article. The EBA thus wished to dodge the thorny issue of whether the Rule 28(2) EPC amendment was appropriate. Instead, the EBA merely considered whether Rule 28(2) EPC changed how the EBA should interpret Article 53(b) EPC.
The EBA found that, in introducing Rule 28(2) EPC, it was the clear intention of the contracting states to exclude plant and animal products produced by natural process from patentability:
"the introduction of Rule 28(2) EPC, the legal and factual situation underlying decision G 2/12 (supra) has substantially changed. This amendment constitutes a new aspect or consideration which has arisen since the EPC was signed which may give reason to believe that a grammatical, and restrictive, interpretation of the wording of Article 53(b) EPC conflicts with the legislator's aims, whereas a dynamic interpretation may bring a result that diverges from the wording of the law".
Whilst it stood by its previous interpretation of the normal meaning of the words in Article 53(b) EPC as not providing for the exclusion, the EBA found that this did not prohibit a "broader understanding" of the Article. As such, the EBA reasoned that the wording of Article 53(b) EPC was not incompatible with Rule 28(2) EPC. The EBA concluded:
"The Enlarged Board accordingly abandons the interpretation of Article 53(b) EPC given in decision G 2/12 (supra) and, in the light of Rule 28(2) EPC, holds that the term "essentially biological processes for the production of plants or animals" in Article 53(b) EPC is to be understood and applied as extending to products exclusively obtained by means of an essentially biological process or if the claimed process feature defines an essentially biological process."
Final thoughts
The EBA's decision in G3/19 can be simply summarised as follows.
EBA: Article means P (under a grammatical, systematic and teleological interpretation)
AC: The New Rule changes meaning of Article to Q.
EBA: Because of the New Rule, Article now means Q.
Therefore, whilst the EBA rephrased the referred questions so as to not consider the appropriateness of Rule 28(2) EPC, G3/19 still seems to none-the-less open the door to the AC to change the EPC by amending the Rules, without unanimous agreement from the contracting states or a diplomatic conference. Finally, the fudging by the EBA to reach its decision in G3/19 will raise questions as to its functioning as an independent body, free from the political influence of the President and AC.
_____________________________________________________________________
1The President's Referred Questions
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?
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?
2The EBA's Re-phrased Question
Taking into account developments that occurred after a decision by the EBA giving an interpretation of the scope of the exception to patentability of essentially biological processes for the production of plants or animals in Article 53(b) EPC, could this exception have a negative effect on the allowability of product claims or product-by-process claims directed to plants, plant material or animals, if the claimed product is exclusively obtained by means of an essentially biological process or if the claimed process feature define an essentially biological process?
Lessons in legal fudge from the EBA in Pepper (G3/19)
Reviewed by Rose Hughes
on
Tuesday, May 19, 2020
Rating:
Reviewed by Rose Hughes
on
Tuesday, May 19, 2020
Rating:
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An excellent account of the distinctly iffy manouevres employed by the EBOA to reach the conclusion desired!
ReplyDeleteAt least one elephant is now situated in the room. Namely, if new Rule 28(2) was not introduced legally - which the EBOA side-stepped considering - can a "dynamic interpretation" of Article 53(c) legitimately arrive at the conclusion reached by the EBOA, if that very interpretation rests upon a rule which was not adopted in a valid manner?
I wonder if we have not seen the last of this. Surely a clever representative can try to get the Boards to look at the issue of whether Rule 28(2) was adopted in a legal manner - and perhaps a Chairman or two close to the end of their careers with the EPO could be persuaded to take a look at this question without the threat of (non-)reappointment hanging over them.
(May a crude parallel be drawn, pehaps, with the BVerfG's decision that the UPCA contravenes the German constitution due to violation of the proper procedure for its ratification...?)
I think you mean Article 53(b) not 53(c)?
ReplyDeleteThanks to Rose for her brilliant analysis of G 3/19.
ReplyDeleteI have not yet seen one comment approving the way the EBA has dealt with the questions referred to it by the president. All commenters are surprised to say the least.
As I said before, I cannot imagine the CJEU rewriting a prejudicial question referred to it in order to give a politically correct reply wished by the commission or a group of member states.
As correctly pointed out, there were mechanisms at hand in order to render decisions G 2/13 and G 3/13 moot. Was it necessary for the EBA to eat its hat in order to please the AC and the president?
Following the argumentation of the president, the EBA took T 272/95 in order to come to the conclusion that there was divergent case law. The problem is that it is not possible to find any reference to Art 53(b) in this decision. There is only ever question of Art 53(a)!
The EBA gave lots of reasons why it should not change its interpretation of Art 53(c), but eventually came to the conclusion wished by the AC and the president. Where is the coherence one would expect from a body such as the EBA? That the EBA can change its case law is not disputed. The way it did is more than problematic.
Through the reforms of 2016, the AC has been given a strong lever in order to obtain what it wants from the EBA: should you do not agree with our view, you can forget being re-appointed. I do not call this respecting the separation of powers.
In G 6/95 the EBA had the guts to resist the AC when it amended R 71a(1) EPC1973. It decided that the amended rule did not apply to the boards of appeal. In G 6/95 the EBA decided that “the boards of appeal continue to have a discretion as to whether or not to send a communication when a summons to oral proceedings is issued”. Only the RPBA2020 has rendered this decision moot.
Times have changed, now the users of the EPO will have to cope with a “dynamic” interpretation of legal provisions by the EBA!
Thanks to Rose for her brilliant analysis of G 3/19.
I have not yet seen one comment approving the way the EBA has dealt with the questions referred to it by the president. All commenters are surprised to say the least.
As I said before, I cannot imagine the CJEU rewriting a prejudicial question referred to it in order to give a politically correct reply wished by the commission or a group of member states.
As correctly pointed out, there were mechanisms at hand in order to render decisions G 2/13 and G 3/13 moot. Was it necessary for the EBA to eat its hat in order to please the AC and the president?
Following the argumentation of the president, the EBA took T 272/95 in order to come to the conclusion that there was divergent case law. The problem is that it is not possible to find any reference to Art 53(b) in this decision. There is only ever question of Art 53(a)!
The EBA gave lots of reasons why it should not change its interpretation of Art 53(c), but eventually came to the conclusion wished by the AC and the president. Where is the coherence one would expect from a body such as the EBA? That the EBA can change its case law is not disputed. The way it did is more than problematic.
Through the reforms of 2016, the AC has been given a strong lever in order to obtain what it wants from the EBA: should you do not agree with our view, you can forget being re-appointed. I do not call this respecting the separation of powers.
In G 6/95 the EBA had the guts to resist the AC when it amended R 71a(1) EPC1973. It decided that the amended rule did not apply to the boards of appeal. In G 6/95 the EBA decided that “the boards of appeal continue to have a discretion as to whether or not to send a communication when a summons to oral proceedings is issued”. Only the RPBA2020 has rendered this decision moot.
Times have changed, now the users of the EPO will have to cope with a “dynamic” interpretation of legal provisions by the EBA!
Techrights and zoobab: FINGERS OFF!!!
I am sure this is a stupid question, but can anyone tell me why the EBoA didn't say "this doesn't apply to patents/applications with a filing/priority date before 1 July 2017". The wording, which refers to grant dates, makes no sense to me. What does this mean for a patent granted on 2 July 2017?
ReplyDeleteI believe the EBA may have overlooked Article 3 of the "Decision of the Administrative Council of 29 June 2017 amending Rules 27 and 28 of the Implementing Regulations to the European Patent Convention (CA/D 6/17)", which introduced Rule 28(2) EPC. Article 3 states:
ReplyDelete"This decision shall enter into force on 1 July 2017. Rules 27 and 28 EPC as amended by Articles 1 and 2 of this decision shall apply to European patent applications filed on or after this date, as well as to European patent applications and European patents pending at that time."
Hence, Rule 28(2) EPC was introduced with RETROACTIVE effect, including for those pending applications otherwise relying on G 2/12 as laying out the law. I therefore think that the argument for admissibility of G 3/19, namely that T 1063/18 did not interpret the law dynamically and therefore is conflicting with earlier decisions does not hold. Rule 28(2) as introduced by the AC was not introduced dynamically in the sense used by the EBA and the Board in T 1063/18 correctly found that a conflict existed between Rule 28(2) and G 2/12.
One could even ask if the EBA has now overstepped its bounds by declaring Article 3 of the AC's decision void...
Has anyone else noticed that, for G 3/19, the composition of the EBA changed between May 2019 and May 2020? H. Rothe (legally qualified) and W. Sieber (technically qualified) were replaced with A. Galgo Peco and P. Gryczka.
ReplyDeleteUnless I missed something, this change was not announced. Perhaps this has something to do with the fact that the "procedural documents" link for G 3/19 has not worked for many months now.
It is not uncommon that the composition of a board changes, and reasons are never given.
ReplyDeleteTo my knowledge there is no legal provision requesting the change to be announced. The RPEBA are silent on this point. It is however recorded in the public part of the file.
I would thus not over interpret the change of composition of the EBA in G 3/19.
Should I have been a member of the BA, I would however not have liked to see my name associated with the EBA taking such a disputable decision.
In the present case, it is not being over adventurous to think that the decision is mainly that of the president of the boards of appeal and of the rapporteur.
Thanks to its “dynamic” interpretation, not only the perception of the independence of the boards is passé, but the independence as such. And this is not good news.
What if tomorrow the UPC (should it ever come into working) takes a decision which is at odds with that of the EBA? Will the EBA then also adopt a dynamic interpretation of its case law? Heavens forbid!
Techrights and zoobab: FINGERS OFF!!!
In another place MaxDrei wrote:
ReplyDelete"So let’s zoom in on the notion of the separation of powers between the legislative, judicative and executive branches of government. The EPC’s EPO is not the legislative branch. It should confine itself to the other two pillars of the Rule of Law, right?"
The problem arises is that the AC can only amend A53(b) under A33(1)(b) by a unanimous vote, which is not required for a rule change. If the AC by means of a change of the rules is also empowered to amend the articles, this is contradictory to the wishes of the contracting states as expressed by the EPC.