On 5 December 2018 Oral Proceedings took place in relation to a patent application entitled “New pepper plants and fruits with improved nutritional value”, T 1063/18.
EPO Technical Board of Appeal 3304 held “that Rule 28(2) EPC (…) is in conflict with Article 53(b) EPC”. The Board published a report about its decision here.
In short, the Rule can no longer stand or be used to reject patent applications if it does not conform to the Article it is supposed to implement.
Article 53(b) EPC renders patent-ineligible plant and animal varieties and essentially biological processes for the production of plants and animals. The so-called “Broccoli II and Tomatoes II” decisions (G2/13 and G2/12) from 2015, had provided the guidance that although essentially biological processes for the production of plants are patent-ineligible according to Article 53(b), the products of such processes are not ineligible just because the process used to make them could not be patented. This meant that, if other patentability conditions such as novelty and inventive step were complied with, a plant or animal obtained by “classical” breeding as opposed to biotechnological means could, in principle, be patented. However, plant breeders concerned about access to plant material for breeding purposes successfully lobbied and Rule 28(2) EPC was implemented as a consequence, which dictates that “European patents shall not be granted in respect of plants or animals exclusively obtained by means of an essentially biological process”. The EPO reinforced this provision by amending its Guidelines for Examination and internal practices accordingly.
However, it appears that the Technical Board of Appeal has now invoked Article 164 (2) EPC (which dictates that where an Article and Rule are in conflict, the Article prevails) and have attempted to sweep away Rule 28(2) EPC and the EPO’s practice based on it, reinstating the environment under the Broccoli II/Tomatoes II decisions, whereby plants obtained by breeding could be patentable under the right circumstances.
It is difficult to say what the long term effects will be, short of plant breeders seeking contrasting decisions in other cases to provoke a referral to the Enlarged Board. In the short term, however, it is plausible that the EPO will be under pressure from plant breeders to stay the examination of applications whose outcome turns on Rule 28(2) EPC.