Decision G 3/19 of the Enlarged Board of Appeal of the European Patent Office

| Vera Vallone

Decision G 3/19 follows the referral initiated by the President of the EPO. The background of his action was the decision by the EPO Boards of Appeal T 1063/18 concerning the patentability of a pepper plant. It was the latest decision on the widely disputed topic of the patentability of plants and animals. After the Tomato II and Broccoli II decisions, the European Commission issued a Notice on the interpretation of certain articles of the EU Biotechnology Directive, which was contrary to what the Enlarged Board of Appeal (EBA) decided in Tomato II and Broccoli II.

In line with the European Commission’s interpretation, the Administrative Council amended Rule 28(2) of the European Patent Convention (EPC), excluding plants or animals exclusively obtained by means of an essentially biological process from patentability, which seemed contrary to the interpretation of Article 53(2) EPC by the EBA. Indeed, in its decision T 1063/18, which concerned the patentability of a pepper plant, the Board of Appeal held that Article 53(b) EPC and Rule 28(2) EPC were in conflict and therefore, according to Article 164(2) EPC, the interpretation of Article 53(b) EPC in decisions G 2/12 and G 2/13 (Tomato II and Broccoli II) prevailed over Rule 28(2) EPC.

Against this background, the President of the EPO referred two questions to the EBA, which it merged into one: «Taking into account developments that occurred after a decision by the Enlarged Board of Appeal giving an interpretation of the scope of the exception to patentability of essentially biological processes for the production of plants or animals in Article 53(b) EPC, could this exception have a negative effect on the allowability of product claims or product-by-process claims directed to plants, plant material or animals, if the claimed product is exclusively obtained by means of an essentially biological process or if the claimed process feature define an essentially biological process?» (III.3)

The EBA decided the following: «Taking into account developments after decisions G 2/12 and G 2/13 of the Enlarged Board of Appeal, the exception to patentability of essentially biological processes for the production of plants or animals in Article 53(b) EPC has a negative effect on the allowability of product claims and product-by-process claims directed to 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. This negative effect does not apply to European patents granted before 1 July 2017 and European patent applications which were filed before that date and are still pending.»

In its reasoning, the EBA addresses two main issues. The first issue concerns the institutional provisions and the relationship between the Administrative Council and the Boards of Appeal, which resulted in the rephrasing of the referred questions (1.). The EBA also clarifies the requirement of different opinions of the Board of Appeal according to Article 112(1)(b) EPC (2.). The second issue focusses on substantive provisions and concerns the interpretation of Article 53(b) EPC (3.).

In his referral, the President of the EPO addresses the question of the «allocation of competence under the EPC to determine the legal content of an Article of the Convention and the question of the hierarchy of norms» (II.4). The question called for a decision on the relationship between the Administrative Council and the Boards of Appeal, which | was highly debated prior to the decision. The EBA held that this institutional question would reach beyond the objective of the referral. «As it is framed, this question calls for a ‹yes’ or ‹no’ answer to cover every conceivable scenario that could arise from any regulatory attempt to shape the legal content of a provision of primary legislation, i.e. an Article of the EPC, by means of secondary legislation, i.e. a Rule of the Implementing Regulations.» (II.5) Therefore, the EBA rephrased the questions and merged them into one, which only relates to substantive provisions.

Further, the EBA discussed the question of admissibility according to Article 112(1)(b) EPC. It considered that the question concerned a point of law of fundamental importance (V.3). It also confirmed that there were different decisions of the Boards of Appeal. The difference, however, was not based on the scope of Article 53(b), but on the methodological question of whether to regard or disregard Rule 28(2) EPC for the interpretation of Article 53(b) EPC (VI.5.5).

After dismissing the grammatical, systematic, teleological, and historical interpretation as unhelpful (XIV.6, XVII.), the EBA also held that there was no subsequent agreement or practice to take into account for the interpretation of Article 53(b) EPC. Therefore, the EBA applied the «dynamic interpretation» in light of Rule 28(2) EPC. This broader interpretation of the scope of Article 53(2) EPC is based on the «legal and factual situation underlying decision G 2/12» (XXVI.4), which had substantially changed. Therefore, the interpretation and the scope of the exception to patentability, respectively, can be subject to a dynamic interpretation caused by legal, practical or factual developments (XXI, XXII.). «This method of interpretation could come into play where considerations have arisen since the Convention was signed which might give reason to believe that a literal interpretation of the provision’s wording would conflict with the legislator’s aims. It might thus lead to a result which diverges from the wording of the law.» (XXII.)

In application of the dynamic interpretation, the EBA clarified whether Rule 28(2) EPC is a relevant development, which had to be taken into account. Previously, the Board of Appeal in T 1063/18 held «that the adoption of Rule 28(2) EPC was not a new development which was to be taken into account in interpreting Article 53(b) EPC, in particular because the Administrative Council lacked competence to ‹amend’ that Article by means of the Implementing Regulations.» (XIX.) The EBA, however, did find this view too strict: «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.» (XXV.3).

Moreover, the EBA held that there is no general prohibition on adopting secondary legislation, in this case Rule 28(2) EPC. As the Implementing Rules (28(2) EPC) were amended after the latest EBA decision, «it is necessary to examine whether and, if so, to what extent this new development justifies a dynamic interpretation of Article 53(b) EPC.» (XXVI.).

After taking into account the traveaux préparatoires for Rule 28(2) EPC and the wording of the Rule itself, the EBA concluded that it was «the EPC legislator’s intention to establish, by this means, a particular interpretation of Article 53(b) EPC, which is that plants or animals exclusively obtained by means of an essentially biological process are excluded from patentability.» (XXVI.3)

The key points of the decision are summarized as follows:

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  Rule 28(2) EPC and the new interpretation of Article 53(b) EPC are not in conflict and therefore Article 164(2) EPC is not applicable.
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  Due to the dynamic interpretation in light of Rule 28(2) EPC, the new interpretation of Article 53(b) EPC has a negative effect on the allowability of product claims or product-by-process claims directed to 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.
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  The exclusion, however, does not apply to patents granted or applications filed before 30 June 2017 (when Rule 28(2) EPC entered into force). Relevant date for the latter is the filing and priority date, respectively (XXIX.).

The decision G 3/19 should finally bring some clarity to the previous situation as patentability is now harmonised with the EU Biotechnology Directive as well as Rule 28(2). Nonetheless, the question remains as to whether the EBA should have been resolute and demanded an amendment of Article 53(b) EPC. However, as the EBA held that an amendment of the Implementation Rules can, but does not have to, be a factor (which has to be determined from case to case) it could leave enough flexibility for future decisions of this kind.