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Third time lucky? EPO Enlarged Board of Appeal referred issue of plant patentability again


12th Apr 2019

A new referral of a point of law to the Enlarged Board of Appeal has been made by the President of the European Patent Office (EPO). The point of law relates to whether plants or animals exclusively obtained by means of an essentially biological process are patentable under the European Patent Convention (EPC).

Previously, two Enlarged Board of Appeal decisions found that while essentially biological processes for the production of plants and animals are not patentable, plants and animals exclusively obtained by such means are not excluded and thus patentable under the EPC. These decisions were made to ensure the uniformity of harmonised European patent law and to fully align the EPC with the EU Biotechnology Directive.

However, the EU Commission, which is not associated with the EPO, decided that it was the EU legislator’s intention when adopting the Biotechnology Directive to exclude plants and animals exclusively obtained by means of an essentially biological process. In effect, this resulted in disharmony between the Enlarged Board of Appeal and the EU Commission’s decision.

The EPO responded by introducing an Implementing Regulation stating that the EPC should be interpreted so that plants and animals obtained by means of an essentially biological process are not patentable under the EPC. This was in direct contravention of the Enlarged Board of Appeal’s prior decision but in agreement with the EU Commission’s decision.

A recent Board of Appeal decision highlighted this disparity, and decided that the Enlarged Board of Appeal’s interpretation of the EPC took precedence over the Implementing Regulation introduced by the EPO. This has provided legal uncertainty for many parties as it is unclear whether plants and animals exclusively obtained by means of an essentially biological process are now patentable under the EPC.

Thus, the President referred the issue to the Enlarged Board of Appeal. However, the President of the EPO may refer a point of law to the Enlarged Board of Appeal only in specific circumstances i.e. when two Boards of Appeal come to differing decisions on the same issue. Some have argued that these circumstances have not been met in this case. The Enlarged Board of Appeal may be forced to reject the referral, potentially resulting in continued legal uncertainty, although they may give their answer to the referred questions anyway.

Furthermore, it seems unlikely that a new Board of Appeal decision disagreeing with the previous Board of Appeal decision will issue soon, however, as all examination and opposition proceedings related to plants and animals exclusively obtained by means of an essentially biological process have been officially stayed by the EPO (perhaps illegally) pending the outcome of the referral to the Enlarged Board of Appeal.

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.

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Tom Bosworth
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