Broccoli, Tomatoes, Pepper...and Beer! (T0420/19)

The Cambridge Beer Festival (taking place this week) is not only one of the UK's largest beer festivals, but also results in one of the largest, non-IP-related, concentrations of patent attorneys that can surely be found. Inspired by this phenomena, PatKat has taken a look at two very different "beer"-related patent cases. The first of these cases, reviewed in this post, considered the infamous "dynamic interpretation" by the Enlarged Board of Appeal in Pepper (G 3/19) in a decision relating to a new barley for flavourful beer (T 0420/19). 

The Board of Appeal decision in T 0420/19 was one of the first to interpret Pepper (G 3/19), which related to the exclusion of plants produced by "essentially biological processes" from patentability. T 0420/19 is a good reminder of the political pressures at play in patent law, especially in view of the recent European Parliament vote for the exclusion of gene edited plants from patentability (IPKat). 

Lessons in legal fudge: Pepper (G 3/19) 

Pepper (G 3/19) related to the politically fraught question of whether patents directed to plant and animal products produced by essentially biological processes (e.g. natural breeding methods as opposed to genetic modification) should be excluded from patentability. Prior to G 3/19, the EBA had found in G 2/12 (Broccoli/Tomato II) that the EPC did not exclude plant and animal products produced by essentially biological processes from patentability. The decision in Broccoli/Tomato II (G 2/12) was reversed by the EBA in Pepper (G 3/19) following political pressure from the EU Commission and a rather dubious rule change by the Administrative Counsel (AC) of the EPO. In a remarkable demonstration of legal fudge, the EBA in Pepper found that a "dynamic interpretation" of the Articles could be adopted in view of the new Rule introduced by the Administrative Counsel (Rule 28(2) EPC). The EBA concluded that the new Rule changed the interpretation of the Article 53(b) EPC, such that plants produced by essentially biological processes were now excluded from patentability. 

However, the EBA also ordered that its "dynamic interpretation" of G 3/19 only had a limited retroactive effect. Specifically, the EBA ordered that its new interpretation should not apply to patents granted before 1 July 2017, when Rule 28(2) EPC entered into force, or on pending European patent applications seeking protection for such claims which were filed before that date. 

From peppers to beer

Broccoli, Tomatoes, Pepper...and Beer

T 0420/19 related to a Carlsberg patent directed to beer comprising a new type for barley (EP2373154). Beer is typically made from barley, water, hops and yeast. Barley contains the compound dimethyl sulfide (DMS) which at low levels adds beneficial flavour to the beer. However, the flavour from DMS becomes unpleasant if DMS is present at high levels, adding undesirable sulphurous "cabbage-like" flavours to the beer. 

The patent in T 0420/19 described a barley plant carrying a mutation in the gene encoding the enzyme required for the barley plant to produce DMS. The examples in the patent described how the barley plant was produced using well known mutagenesis and breeding selection methods. Beer made from these barely kernels was confirmed to be low in DMS, and had a notable enhanced aromatic-fragrant flavour in professional tastings. The patent included a granted claim directed to a barley plant carrying a mutation in the MMT gene. The patent was granted before 1 July 2017. 

The Opponent in T 0420/19 argued that the EBA decision should have a full retroactive effect, and that Article 53(b) EPC should be interpreted as excluding products produced by essentially biological processes at least since the adoption of the EU Biotech Directive 98/44, which became an integral part of the EPC in 1999. The Opponent thus submitted that the interpretation of Article 53(b) EPC provided by the EBA in G 3/19 should apply to the Carlsberg patent. 

The Board of Appeal did not agree with the Opponent arguments, noting the careful caveats the EBA had adopted for its "dynamic interpretation" of Article 53(b) EPC. Specifically, despite the EBA's overall conclusion that Article 53(b) EPC now did exclude products produced by essentially biological processes from patentability, the EBA nonetheless maintained that:

1)  Before the introduction of Rule 28(2) EPC by the AC, no EPC Article or Rule, or even the very wording of the EU Biotech Directive, could lead directly to an interpretation of Article 53(b) EPC which would expand the process exclusion to the products of such processes. 

2) The EPO was not directly bound by EU law and especially not by a legally non-binding Notice on the interpretation of the EU Biotech Directive issued by the EU Commission.

The Board of Appeal therefore agreed with the EBA that the interpretation provided by G 3/19 only applied after Rule 28(2) EPC came into force. Such is the nature of "dynamic interpretation". The Board of Appeal therefore gave short-shift to the Opponent's arguments, and upheld the patent in view of the clear guidance from the EBA in Pepper (G 3/19).

Final thoughts

Importantly, the EBA did not directly consider the appropriateness of the introduction of Rule 28(2) EPC by the AC in G 3/19. However, the decision of the EBA in G 3/19 to adopt a dynamic interpretation of the EPC, based solely on this rule change, was a tacit admission that the AC could change the meaning of the EPC by the back-door of a rule change. This admission was no more apparent than in the EPC's decision to apply, as the cut-off date for its dynamic interpretation, the date on which the new rule itself came into force (and not, for example, the decision of the EBA in G 3/19). The decision of the EBA in Pepper (G 3/19) never made much legal sense to this Kat, and T 0420/19 serves only to highlight its internal contradictions. Perhaps some beer will help. 

Further reading

Lessons in legal fudge from the EBA in Pepper (G3/19) (19 May 2020)