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Interpreting the EPC – a worrying development?


4th Jan 2017

The European Patent Office (EPO) has published a Notice dated 24 November 2016 in which it was announced that the President of the EPO has decided to stay all proceedings before EPO examining and opposition divisions in which the decision depends entirely on the patentability of a plant or animal obtained by an essentially biological process.

This is despite a recent EPO Enlarged Board of Appeal decision G2/13 in which it was clarified that the exclusion of essentially biological processes for the production of plants in Article 53(b) EPC does not have a negative effect on the allowability of a product claim directed to plants per se, even if such plants are obtained by such essentially biological processes.

So why has the EPO President decided ex officio to overrule the Enlarged Board’s interpretation of Article 53(b) EPC?

The above-mentioned EPO Notice mentions a European Commission Notice on certain articles of “Biotech” Directive 98/44/EC of the European Parliament and of the Council of 6 July 1998. The Commission Notice points out that the Commission has taken the view that it was the intention of the Biotech Directive legislators to exclude from patentability plants and animals obtained by essentially biological processes.

Although several non-EU countries are member states of the EPO, and although the EPO is not bound by EU law or cases, in 1999 the EPO implemented the Biotech Directive by amending the Implementing Regulations to the EPC. Thus the Biotech Directive, as reflected in the Implementing Regulations, can be used to interpret the main Articles of the EPC.
However, a stay of proceedings by the EPO President in response to the Commission’s Notice has been argued by some to be premature and inappropriate for the following reasons:

  • firstly, it is the Court of Justice of the EU which is responsible for interpreting EU law, including the Biotech Directive. The Commission’s interpretation of the presumed legislative intent behind the Biotech Directive is not legally binding on either the EPO or EU member states;
  • secondly, even if the Court of Justice of the EU issued a decision at some point in the future agreeing with the Commission’s interpretation of the legislative intent behind the Biotech Directive in relation to this matter, the Biotech Directive and/or the EPC would themselves need to be modified to change the law. Only once the EPC is changed would there be legal justification for the EPO President to overturn the Enlarged Board’s decision G2/13;
  • thirdly, there is arguably no legal basis in the EPC itself for implementing a stay in proceedings under these circumstances; and
  • fourthly, the EPO Notice does not indicate how long the stay will be in place or indeed what circumstances will allow the stay to be removed. This creates legal uncertainty for applicants, patentees and third parties.

While the subject-matter of the EPO Notice concerns the patentability of a plant or animal obtained by an essentially biological process, is a precedent being set for the EPO President to modify ex officio how the EPC is interpreted in other areas, even if in contradiction with the EPO Enlarged Board of Appeal, the highest legal court of the EPO? If yes, this is indeed a worrying development.

This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.

Author
Michael Roberts
Partner
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