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Press Communiqué of 14 May 2020 concerning opinion G 3/19 of the Enlarged Board of Appeal

The Enlarged Board of Appeal of the European Patent Office issued opinion G 3/19 (Pepper) today and concluded that plants and animals exclusively obtained by essentially biological processes are not patentable.

The Enlarged Board of Appeal of the European Patent Office adopted a dynamic interpretation of the exception to patentability under Article 53(b) of the European Patent Convention (EPC) and held that the non-patentability of essentially biological processes for the production of plants or animals also extends to plant or animal products that are exclusively obtained by means of an essentially biological process.

Background

The Enlarged Board of Appeal is the highest judicial authority under the EPC, which provides for an autonomous legal system that is separate from the European Union. The Enlarged Board's main task is to ensure the uniform application of the EPC.

Under Article 53(b) EPC, European patents shall not be granted in respect of plant or animal varieties or essentially biological processes for the production of plants or animals. Rule 28(2) EPC provides that under Article 53(b) EPC, European patents shall not be granted in respect of plants or animals exclusively obtained by means of an essentially biological process. Rule 28(2) EPC was introduced by decision of the Administrative Council of the European Patent Organisation and came into force on 1 July 2017.

In 2015, the Enlarged Board had concluded in its decisions G 2/12 and G 2/13 within the then applicable legal framework, i.e. before the introduction of Rule 28(2) EPC, that the non‑patentability of essentially biological processes for the production of plants or animals under Article 53(b) EPC did not extend to products that are exclusively obtained by means of an essentially biological process.

In 2018, a Technical Board of Appeal held in decision T 1063/18 that new Rule 28(2) EPC had no impact on the interpretation of Article 53(b) EPC, and followed the Enlarged Board's earlier decisions G 2/12 and G 2/13.

In 2019, the President of the European Patent Office referred a point of law to the Enlarged Board of Appeal under Article 112(1)(b) EPC concerning the interpretation of Article 53(b) EPC in view of legal and other developments occurring after decisions G 2/12 and G 2/13, and in particular in view of new Rule 28(2) EPC.

Key considerations

In its opinion issued today, the Enlarged Board of Appeal held the referral by the President of the European Patent Office to be admissible within the terms of a re‑phrased question. On the merits of the referral, the Enlarged Board endorsed its earlier findings on the scope of Article 53(b) EPC, which were based on the classical (i.e. the grammatical, systematic, teleological and historical) methods of interpretation. However, the Enlarged Board found that a particular interpretation which has been given to a legal provision can never be taken as carved in stone, because the meaning of the provision may change or evolve over time. This meant that decisions G 2/12 and G 2/13 did not settle the meaning of Article 53(b) EPC once and for all.

Taking account of the Administrative Council's decision to introduce Rule 28(2) EPC, the preparatory work on this provision and the circumstances of its adoption, as well as legislative developments in the EPC contracting states, the Enlarged Board concluded that new Rule 28(2) EPC allowed and indeed called for a dynamic interpretation of Article 53(b) EPC.

In adopting this dynamic interpretation, the Enlarged Board abandoned its earlier interpretation of Article 53(b) EPC in decisions G 2/12 and G 2/13. It held that, after the introduction of new Rule 28(2) EPC, Article 53(b) EPC was to be interpreted to exclude from patentability plants, plant material or animals, if the claimed product is exclusively obtained by means of an essentially biological process or if the claimed process features define an essentially biological process.

In order to ensure legal certainty and to protect the legitimate interests of patent proprietors and applicants, the Enlarged Board ruled that the new interpretation of Article 53(b) EPC given in G 3/19 had no retroactive effect on European patents containing such claims which were granted before 1 July 2017, or on pending European patent applications seeking protection for such claims which were filed before that date.

Contact

Nikolaus Obrovski
Spokesperson of the Boards of Appeal of the European Patent Office
BOA-PRESS@epo.org

This press release is a non-binding document for media use.

Further information

06.07.1998

EU Directive 98/44/EC of the European Parliament and of the Council on the legal protection of biotechnological inventions;

OJ EU 1998 L 213/13

16.06.1999

Decision CA/D 10/99 of the Administrative Council, insertion of new Chapter VI "Biotechnological inventions" in Implementing Regulations to the EPC;

OJ EPO 1999, 437

09.12.2010

G 2/07 (Broccoli I), Decision of the Enlarged Board of Appeal;

OJ EPO 2012, A130

G 1/08 (Tomatoes I), Decision of the Enlarged Board of Appeal;

OJ EPO 2012, A 206

25.03. 2015

G 2/12 (Tomatoes II), Decision of the Enlarged Board of Appeal;

OJ EPO 2016, A27

G 2/13 (Broccoli II), Decision of the Enlarged Board of Appeal;

OJ EPO 2016, A28

01.07.2017

Rule 28(2) EPC (entry into force), see Decision CA/D 6/17 of the Administrative Council;

OJ EPO 2017, A56

05.12.2018

T 1063/18, Decision of Technical Board of Appeal 3.3.04;

decision text (not published in OJ EPO)

05.04.2019

Referral of a point of law by the President of the EPO;

OJ EPO 2019, A52

14.05.2020

G 3/19 (Pepper), Opinion of the Enlarged Board of Appeal;

opinion text (not yet published in OJ EPO)

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