EPO does not follow the US and JEM on Patentability of Plants

June 01, 2020
Post by Heidi S. Nebel

The Enlarged Board of Appeal has recently handed down its highly anticipated decision regarding the patentability of plants and plant varieties, in which the product is exclusively obtained by an essentially biological process (plant breeding).

The Board held that plants and animals that are the result of traditional breeding or any other essentially biological process are NOT patentable.

“Taking into account developments after decisions G 2/12 and G 2/13 [“Broccoli I” and “Tomato I”] 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 is the culmination of a series of conflicting and confusing decisions by the various bodies of the EPO dating back to 2010.Then the Enlarged Board of Appeal issued a landmark ruling in cases “Broccoli I” and “Tomato I”, confirming the scope of Article 53 as excluding plants and animals obtained through traditional breeding.

In 2015 the Board reconsidered the 2010 decision, declaring that plants or plant material derived through conventional breeding processes are indeed patentable subject matter.

After much controversy, and conceding to great pressure, the EU in 2017, set out a new Biopatent Directive to explicitly rule out the patenting of matter produced by an essentially biological process. The EPO reacted through the implementation of Rule 28(2), which states that European patents shall not be granted in respect of plants or animals exclusively obtained by means of an essentially biological process.

In yet another twist, in late 2018, a Technical Board of Appeal declared the EPO’s practice under Rule 28(2), invalid for plant and animal patents. It was found to have no impact in the 2015 decision in “Broccoli I” and “Tomato I”, as the guidelines had not yet been applied.

Following this, the Board reversed the rejection of Syngenta’s patenting of chili pepper plants holding that its application to register EP 27 53 168 should not have been rejected by the EPO on the basis of Rule 28(2).

This led to referral of the question to the Enlarged Board of Appeal in light of the Syngenta decision and the Ruling of May 19.The decision, G 3/19 also rejects the earlier broccoli and tomato rulings.It would seem that this is the end of the matter.

The May 2020 decision is a blow to the Agricultural industry who was hopeful for a similar outcome in Europe to that of the United States Supreme Court here in JEM Ag Supply v Pioneer Hi-Bred International, Inc., 534 U.S. 124, (2001), litigated by the attorneys here at MVS. In this decision the Supreme Court indicated that plant varieties are indeed plant eligible subject matter. JEM was the last broadening case under 35 U.S.C. Section 101 that has preceded many narrowing interpretations for naturally occurring DNA sequences and the like.

There is at least some favorable news in that the decision is not apply to European patents granted before 1 July 2017 and European patent applications which were filed before that date and are still pending.The hundreds of cases that had been stayed will now process through the system with the prior favorable ruling as a guide, but the outcome will not be the same for those that have not yet been filed.

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