Patentability of plants and animals at the European Patent Office – the decision G 3/19 “Pepper
In its decision G 3/19 “Pepper” of 14 May 2020, the Enlarged Board of Appeal of the European Patent Office decided that European patents will no longer be granted on plants and animals exclusively obtained by means of an essentially biological process (such as breeding and crossing).
This is a remarkable departure from its own earlier case law “Broccoli II” and “Tomatoes II” (G 2/12 and G 2/13 of 25.3.2015), in which the Enlarged Board of Appeal interpreted Art. 53 b) of the European Patent Convention (EPC) to exclude from patentability “essentially biological processes for the production of plants or animals” only, but not the plants and animals obtained by means of these processes.
This earlier case law of the Enlarged Board of Appeal had created quite a strong headwind and led to an amendment of the Implementing Regulations to the EPC, since an amendment of the EPC itself is quite costly and lengthy.
Rule 28(2) of the Implementing Regulations to the EPC, newly introduced on 1 July 2017, specifies that, according to the aforementioned article, the products of these processes, namely plants or animals, are also excluded from patentability.
However, at least in the opinion of one Board of Appeal (T 1063/18 of 5 December 2018), this led to a conflict between Art. 53 b) EPC, which, according to the interpretation of the case law of the Enlarged Board of Appeal valid at the time, only excludes from patentability ‘essentially biological processes for the production of plants or animals’ (but not the plants and animals obtained by means of these processes), and the new Rule 28 (2) of the Implementing Regulations to the EPC, which explicitly specifies that, according to the aforementioned article, the products of these processes, namely plants or animals, are also excluded from patentability. However, Art. 164(2) EPC states that if the two standards do not correspond, the EPC prevails.
With its current decision, the Enlarged Board of Appeal has resolved this conflict by reinterpreting Art. 53 b) EPC in a departure from its old case law and clarifying, in the interests of the EU and the majority of the member states, that the products, namely plants and animals, of this essentially biological process are also not patentable. As consequence of the new interpretation the exclusion of patentability, Rule 28 (2) of the Implementing Regulations to the EPC now also does not conflict with Art. 53 b) EPC.
However, as stated in G 3/19, this new dynamic interpretation has no retroactive effect on patents or patent applications granted or filed before the date of entry into force of Rule 28 (2) (01.07.2017). Such patents or applications are still subject to the old, contrary, more applicant friendly interpretation.
Not affected by the decision are micro-organisms and cells, and plants and animals obtained by microbiological processes (e.g. by gene transfer). In principle, these remain patentable, provided that the invention is not limited to a plant variety or animal breed and that there is no further ethical exclusion from patenting animals.
Nevertheless, plant varieties (obtained using essentially biological processes) are not entirely open to imitation. These can be protected as plant variety right upon application.
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