Plant patentability has long been a contentious issue throughout intellectual property and scientific circles.
The question as to whether plants or animals created through essentially biological processes, such as genetic or selective breeding, can be patented has raged on through appeals and in legal debates for a number of years.
Traditionally, plants or animals created in this way have been eligible to be patented, with landmark cases, such as the Broccoli II and Tomatoes II case, helping to reinforce this.
However, a subsequent rule introduced at the European Patent Office in June 2017 has challenged this belief entirely and reignited the debate surrounding patentability.
The rule introduced by the Administrative Council sought to clarify the issue of patentability, however in doing so it sparked numerous legal challenges which continue to this day.
Here, Jim Robertson, a partner and patent attorney at leading intellectual property firm Wynne Jones IP, explains why this has become such a polarizing issue and discusses the current stance in relation to plant patentability.
In March 2015 the Enlarged Board of Appeal found that Article 53(b) EPC, which prevents essentially biological processes producing plants from being patented, does not exclude plants or plant material from patentability.As such, plant variety obtained through such a process can be patented.
This caused significant political upheaval (and lobbying), with the end result that new Rule 28(2) EPC was introduced.
This stated: “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.”
The new Rule 28(2) clearly contradicts the earlier Article 53(b), and Mr Robertson suggests that for this reason the new rule should be unenforceable.
Mr Robertson said: “This case hinges on the separation of power at the European Patent Office (EPO) – the legislature, the judiciary, and the executive. The legislature enacted the European Patent Convention. The executive (in the form of the Administrative Council) amended the implementing regulations to bring new Rule 28(2) EPC into force. Article 112 EPC confirms that the decisions of the Enlarged Board of Appeal are binding.
“The European Patent Convention states that ‘In case of conflict between the provisions of this Convention and those of the Implementing Regulations [also referred to as the “Rules”], the provisions of this Convention shall prevail’.
So it should have been fairly straightforward.
However, the Administrative Council (despite numerous submissions from industry and professional representatives) introduced Rule 28(2) EPC in an attempt to prevent plants from being patented.
The end result of all of this was various patent applications being refused, and the current appeal.
The appeal surrounds the decision of the examining division to refuse the patent application in accordance with the provisions of Article 53(b) EPC and Rule 28(2) EPC.
The Board of Appeal which heard the case was extended to include two additional members, including one legally qualified member, and ruled that amended Rules 27 and 28 EPC are in conflict with Article 53(b) EPC.
Therefore, the Board found that Rule 28(2) is unenforceable.
On the basis of that finding, the Board has returned the case back to the Examining Division to consider other patentability issues.
Although not binding in case law, this case should be highly persuasive for all other Boards of Appeal, and its ruling should be followed.
Mr Robertson added: “In terms of this specific case, so long as the other patentability issues are satisfied, a granted patent should issue.”
The appeal on Nunhems/Bayer is being heard by the same Board of Appeal and so their decision in this case will clearly be followed. In relation to the opposition against Zeraim/Syngenta, the decision in this case should resolve the Article 53(b) EPC patentability issues.
For applications pending at the EPO, the examining divisions should follow the decision on this case.
Mr Robertson added: “In terms of Rule 28(2) EPC (indeed, all of the changes to Rules 27 and 28 introduced by the Administrative Council), our hope is that the Administrative Council will ‘clean up’ the Implementing Regulations by rescinding its 29 June 2017 decision amending Rules 27 and 28 EPC.
“Given the Board of Appeal’s decision on this case, it should (hopefully) not be a politically difficult decision for the Administrative Council members.
“If politicians want to exclude plants from patentability at the EPO, the only way for them to do it will now be to amend the European Patent Convention (the EPC) itself. This would require the agreement of all EPC member states (not just a majority of them) and so will be extremely difficult to do.”
Mr Robertson added that the decision is excellent news for those who want to obtain granted patents at the EPO for novel and inventive plant varieties obtained by means of an essentially biological process.
He said: “Pleasingly, this decision also reaffirmsthe independence of the Boards of Appeal and the separation of powers at the EPO, which should boost confidence in the EPO.”