EUROPEAN PATENT OFFICE PRACTICE

The EPO has amended its rules on patents for plants and animals obtained by essentially biological processes, but the change raises issues of compatibility with European Union law.

As from 1 July 2017, the European Patent Office (EPO) no longer issues patents for plants and animals obtained by an essentially biological breeding process.

The change was brought in by a decision of the EPO’s Administrative Council to amend Rules 27 and 28 of the European Patent Convention (EPC).

The amended Rules 27 and 28 provide specifically that “European patents shall not be granted in respect of plants or animals exclusively obtained by means of an essentially biological process”.

Background

The issue of the patentability of plants and animals obtained by an essentially biological (i.e. cross and selection) process has been the subject of some debate in Europe over the last few years.

In 2015 the EPO’s enlarged Board of Appeal issued two decisions, known as “Broccoli II and Tomato II” (G2/12 and G2/13).

The decisions confirmed that although Article 53(b) EPC excludes from patentability essentially biological processes for the production of plants, that does not mean that the products of those processes are not patentable.

In November 2016, the European Commission published a Notice on certain articles of Directive 98/44/EC of the European Parliament and of the Council on the legal protection of biotechnological inventions.

The document stated that although no provision of the Directive excludes from patentability of plants and animals obtained by essentially biological processes, it was the European legislator’s intention that the Directive should provide for such an exclusion.

In December 2016, the EPO announced that in view of the European Commission’s Notice, it would stay proceedings in examination and opposition cases in which the invention was a plant or animal obtained by an essentially biological process.

At the end of June 2017, the EPO’s Administrative Council approved the change of rules, with no discussion – as far as we know- with the professional groups and associations that are often involved in this kind of decision.

Are the new Rules 27 and 28 EPC compatible with EU law?

The European Commission issues a document with its own interpretation of European Union provisions on the patentability of plants and animals obtained by essentially biological processes.

The EPO amends its rules on the basis of the European Commission’s document.

Is that the end of the story?

No. There is an important aspect of the EPO’s decision to amend Rules 27 and 28 EPC that is liable to raise issues of compatibility with European Union Law.

Of course most European Patent countries are also member states of the European Union; and under European Union Law, European Union law has primacy over the laws of member states and over international agreements.

But European Union Law (in the case at issue, Directive 98/44/EC) does not exclude from patentability plants and animals obtained by essentially biological methods.

Therefore in any European Union member state, a refusal to grant a patent for plants and animals obtained by essentially biological processes must be considered in contrast with European Union law.

Last but not least, it must be pointed out the European Commission is not a European Union legislative body, nor a court with the authority to interpret European Union law.

Hence its Notice on certain aspects articles of Directive 98/44/EC (…) has no legal value.

What now?

The EPO’s decision to deny patentability for matter that is not excluded from patentability under European Union law does not appear to make legal sense, as explained in depth and legal detail in the Chartered Institute of Patent Attorneys’ document Observations of CIPA on CA/56/17 (proposed amendments to Rules 27 and 28 EPC).

Although the change will not immediately concern many cases, we expect to see appeals against refusals to accept patent applications on the grounds of the amended Rules 27 and 28 EPC.