EPLAW PATENT BLOG

EPO – Biological inventions / Administrative Council overrules the EBA

Posted: July 3rd, 2017

Biological inventions – protection of the products of essentially biological processes – Administrative Council overrules the Enlarged Board of Appeal – Decision CA/D 6/17

In its decision G 2/12 – Broccoli II (OJ EPO 2016, A27), the Enlarged Board of Appeal decided that product claims directed to plants or plant material are not excluded from patent protection notwithstanding the fact that the claimed products are produced by an essentially biological process.

The EBA held that it was of no relevance that the protection conferred by such product claims encompasses the generation of the claimed products by means of an essentially biological process for the production of plants which is excluded as such under Article 53(b) EPC.

In a Notice of November 8, 2016 on certain articles of Directive 98/44/EC (the Biopatent Directive), the EU Commission took the view that the EU legislator’s intention when adopting the Directive was to exclude from patentability products (plants/animals and plant/animal parts) that are obtained by means of essentially biological processes (OJ EU C 411/3 of November 8, 2016). In 1999, the provisions of the Biopatent Directive had been introduced more or less verbatim into the Implementing Regulations to the EPC.

Already on December 12, 2016 the EPO, following a discussion in the Administrative Council, the EPO announced on its website that it had decided to stay all proceedings in examination and opposition cases in which the invention is a plant or animal obtained by an essentially biological process.

Last week, the Administrative Council of the EPO added in its meeting of June 29, 2017 a second paragraph to Rule 28 reading:

“Under Article 53(b), European patents shall not be granted in respect of plants or animals exclusively obtained by means of an essentially biological process.”

Whereas the EBA in Broccoli II also deals with the Implementing Regulations, its conclusions are based on an interpretation of Article 53b EPC. This raises the interesting question whether the amendment to Rule 28 is a mere clarification of the substantive law as it is laid down in the Convention.

This will be decisive for the relevance of the amendment to Rule 28 EPC for the future interpretation of Article 53b EPC, considering that, in accordance with Article 164 (2) EPC, in cases of conflict the provisions of the Convention prevail over those of the Implementing Regulations.

Read the decision of the Administrative Council here.

Read the corresponding notice of the EPO here.

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