In T 1063/18 (Peppers), the Board held that Rule 28(2) EPC should be disregarded, and that plants produced by essentially biological processes should be considered patentable. Specifically, the Board found that the EPO Administrative Council's (AC's) amendment of Rule 28 EPC was in conflict with the prior interpretation of Article 53 EPC in G 2/12 . As such, the Board found that the Rule 28 EPC amendment by the AC was void.
Following support from a number of EPC contracting states, the President decided to discover whether the Boards should be following the guidance from G 2/12 or, instead, that of newly amended Rule 28 EPC .
The President referred the following questions to the Enlarged Board:-
- Having regard to Article 164(2) EPC, can the meaning and scope of Article 53 EPC be clarified in the Implementing Regulations to the EPC without this clarification being a priori limited by the interpretation of said Article given in an earlier decision of the Boards of Appeal or the Enlarged Board of Appeal?
- If the answer to question 1 is yes, is the exclusion from patentability of plants and animals exclusively obtained by means of an essentially biological process pursuant to Rule 28(2) EPC in conformity with Article 53(b) EPC which neither explicitly excludes nor explicitly allows said subject-matter?
Decision G 3/19 of the Enlarged Board
Despite much speculation as to the admissibility of the referral, the Enlarged Board found the referral from the President to be admissible.
Furthermore, answering "yes" to the first question referred by the President, the Enlarged Board made the rather bold move of reversing its previous interpretation of Article 53(c) EPC.
As such, plants and animal products produced by essentially biological processes are not patentable under the EPC.
The Decision itself explains how it "abandons" a previous interpretation of the EPC and how the Decision represents a "new understanding" and a "new interpretation" of the EPC.
Date of Effect of Decision
Importantly, however, it is noted that the Enlarged Board's Decision in this case will not have a retroactive effect on patents filed before Rule 28(2) EPC came into effect on 1 July 2017.
This aspect of the Decision is notable and follows previously established principles concerning a new interpretation of the EPC. The EPO Press Communiqué notes the following reason for the non-retroactive effect:
"In order to ensure legal certainty and to protect the legitimate interests of patent proprietors and applicants […]"
The non-retroactive effect means that the new interpretation will not even apply to the case in which this legal point has been raised. Nevertheless, the non-retroactive effect is consistent with what has been seen before where a new interpretation of the EPC or its rules and/or guidance has been adopted.
It is clear that the Enlarged Board's Decision will negatively impact a number of European agricultural technology companies, as well as other owners of patent applications that have had proceedings stayed pending the outcome of the referral.