The EPO recently released a notice amending Rules 27 and 28 EPC formally excluding from patentability under Article 53(b) EPC plants and animals exclusively obtained by essentially biological processes. The new rules took effect as of 1 July 2017, and apply retrospectively (hence even to granted patents).
The amended rules represent a departure from previous jurisprudence from the EPO’s Enlarged Board of Appeal, which interpreted the EU Biotech Directive 98/44/EC and hence Article 53(b) EPC narrowly, and allowed claims to plants/animals per se produced by essentially biological processes. As an example, both the “Broccoli” and “Tomato” applications which have each been the subject of two Enlarged Board of Appeal decisions, may be treated differently on the basis of the new Rules.
Proceedings before the EPO’s examination and opposition divisions which have been stayed since November 2016 (on which see our previous commentary here) will now be resumed and assessed in line with the amended rules.
The rule changes follow from a European Commission Notice concerning their view of a proper interpretation of Directive 98/44/EC. The Commission was of the view that the 98/44/EC exclusion from patentability was not intended to be limited to merely “essentially biological processes”, but also to plants and animals resulting from said processes.
The EPO’s decision to act on the Commission’s Notice is controversial, given that the Commission is an executive body and not a judicial body. The Court of Justice of the EU, the correct judicial body for the interpretation of EU law, has not providing a ruling on the interpretation on this aspect of the Biotech Directive.
Furthermore, the legality of this change in substantive EPC law using rule amendments has been questioned by several observers (for example, the UK’s Chartered Institute of Patent Attorneys – see here).
It remains to be seen what impact the amended Rules 27 and 28 EPC will have on protection of plant rights in Europe, and whether the way in which the rule changes were introduced will set a precedent for future changes “by the back door” in other areas of substantive European patent law.
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.