Since the two decisions “Broccoli-II” and “Tomatoes II” (G 2/12 and G2/13) of the Enlarged Board of Appeal of the European Patent Office (EPO) of March 2015 applicants of European Patents have been aware that no patents can be granted on “essentially biological processes for the production of plants or animals”, which are excluded from patentability under Article 53(b) of the European Patent Convention (EPC).
In both decisions indicated above the Enlarged Board of Appeal came to the conclusion that the products of such a process, i.e. plants and parts of plants, were not excluded from patentability. Plants and animals obtained from said processes were eligible for patent protection in Europe since such an exception was not specified under Article 53(b) EPC, which ultimately states:
“European patents shall not be granted in respect of: plant or animal varieties or essentially biological processes for the production of plants or animals. This provision shall not apply to microbiological processes or the products thereof.”
Due to the converse interpretation of some EPC member states, including inter alia Germany, this older jurisdiction resulted in an amendment of the EPC Implementing Regulations (EPC IR). Initiated by the likewise converse interpretation of Biotechnology Directive 98/44/EG by the European Commission, Rule 28 EPC IR was complemented by the following second paragraph by the EPO Administrative Council:
„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.”
A subsequent decision T 1063/18 of the Technical Board of Appeal 3.3.04 of the EPO found that the newly introduced second paragraph of this Rule is contrary to Article 53(b) EPC as interpreted in both decisions “Broccoli-II” and “Tomatoes II”. Since the EPC has priority over the EPC IR, the Technical Board of Appeal had affirmed the patentability of the pepper plant claimed by European Patent Application EP 2 753 168, which was obtained from an essentially biological process.
In 2019, this decision caused the President of the European Patent Office to resolve this conflict by means of two referred questions to the Enlarged Board of Appeal in order to achieve a uniform application of law and legal certainty.
With the decision of the Enlarged Board of Appeal taken in March 2020, the previous interpretation of Art. 53(b) EPC according to the decisions “Broccoli II” and “Tomatoes II” was revised. Abandoning the older jurisdiction as well as in line with the majority of the EPC member states, the Enlarged Board of Appeal clarified in its decision “PEPPER” that also the products, i.e. plants and animals, of essentially biologic processes are not patentable, thus adopting a dynamic interpretation.
It must be pointed out that this PEPPER decision does not apply to European patents or applications which had been granted or submitted before July 1st, 2017 and are still pending.
Remark: the plant variety rights for plant varieties remain accessible to plant breeders.
Note: Plants, parts of plants and animals are not patentable if they were obtained exclusively by an essentially biological process.
Enlarged Board of Appeal of the EPO, “PEPPER” (G3/19)
January 5, 2021