Bart Swinkels and Stijn van Dongen, NLO: "In 2015, the so-called Tomato-II and Broccoli-II cases (G 2/12 and G 2/13) reached decisions from the Enlarged Board of Appeal. These decisions held that ‘plant products such as fruits, seeds and parts of plants are patentable even if they are obtained through essentially biological breeding methods involving crossing and selection.’ In other words, individual plants could be patented, even if they were the result of traditional breeding. This decision caused some commotion, and the story did not at all end there.
Last Thursday, 29 June 2017, the Administrative Council (AC) of the European Patent Office (EPO) took a decision to amend the Regulations pertaining to the patentability of plants. In the new rules, plants and animals exclusively obtained by an essentially biological breeding process are excluded from patentability. The amended rules are rules 27 and 28, and they will apply with immediate effect starting on 1 July 2017 (for the actual amendments, please see the end of this report). These rules originally came into being as an implementation into the EPC of the “EU Directive on biotechnological inventions (98/44/EC)”. This EU directive was issued to harmonize European law in a field that was newly emerging at the time.
This decision to change the rules was taken after a proposal of the EPO. The EPO, in turn, made its proposal after a Notice of the European Commission was issued in November 2016. In this notice, the present European Commission clarified that in their view, it was never the intention of the legislators of the original Directive, to allow patents on biological processes or on products obtained by such processes. This Notice of the European Commission was triggered by the Tomato-II and Broccoli-II cases discussed above.
It can be surprising that the EU would have a say in the European Patent Convention (EPC). Many states that are a party to the EPC are not EU member states. Conversely, some EU member states are not a party to the EPC. The EPO's proposal, now adopted, was indubitably intended to promote the uniformity of European patent law. But will it
Proceedings in examination and opposition cases that can be affected by this rule change had been stayed since last November, following the European Commission's Notice. These cases will now be gradually resumed, and they’ll have to deal with the new rules. Thus, The Examining Divisions and Opposition Divisions will probably reject any claims to plants/animals exclusively obtained by means of an essentially biological process.
However, decisions by these Divisions can be appealed, and they most likely will be. The boards of appeal, who issued the Broccoli and Tomato decisions, are not formally bound by an amendment of the EPC Implementing Regulations if they perceive the rule to be in conflict with an article, because articles trump rules. Therefore, the Boards can declare the rule invalid and non-enforceable under Article 164(2) EPC (which the Enlarged Board in G 2/07 already did with Rule 26(5) EPC, which deals with a sort of definition of what essentially biological processes would be). This prerogative of the Boards also applies when there is a conflict of an EPC rule with the interpretation of an EPC article, wherein the interpretation is established by a ruling of the Enlarged Board of Appeal (See e.g. T 315/03, point 5.7).
All of this means that even though the rules have changed, there’s no guarantee that ultimate outcomes of patentability will also change – such a guarantee could only be delivered by either a change in the Articles of the EPC or the Directive, or by new decisions from the Boards of Appeal. Thus, even though the rule changes look pretty clear-cut, they actually do not promote legal certainty in this area. The patentability of plants obtained by means of an essentially biological process is still an unsolved puzzle – it would be interesting to see how future board decisions turn out.
Patentable biotechnological inventions
Biotechnological inventions shall also be patentable if they concern:
(b) without prejudice to Rule 28, paragraph 2, plants or animals if the technical feasibility of the invention is not confined to a particular plant or animal variety;
Exceptions to patentability
(2) 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."