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A Dynamic Reversal by the EPO's Enlarged Board of Appeal

The Enlarged Board of Appeal of the European Patent Office has decided that the exclusion from patentability of essentially biological processes for the production of plants or animals now also extends to plant or animal products that are exclusively obtained by means of an essentially biological process for European patents or pending European patent applications that were granted or filed from July 1, 2017, on.

Plants and animals exclusively obtained by essentially biological processes are excluded from patentability, according to the Enlarged Board of Appeal ("EBA") of the European Patent Office ("EPO"). This reversal of the EBA's previous rulings was issued late last week in the eagerly anticipated opinion in referral G 3/19 ("Pepper"). 

To recap, after the Broccoli-II and Tomato-II decisions (G 2/12 and G 2/13) affirmed the patentability of products derived from essentially biological processes, the European Commission issued a Notice indicating that the Biotech Directive should have been interpreted to exclude such products from patentability (see our June 2015 Commentary, "Clarifying or Confirming the Extent of Process Exclusion under Art. 53(b) EPC?" and our December 2016 Alert, "Clarifying or Confusing? The European Commission Chews on Tomatoes and Broccoli"). In order to comply with the Notice, the EPO Administrative Council introduced Rule 28(2) EPC in July 2017 (see our July 2017 Commentary, "Clarifying or Conforming? The EPO Bows to the European Commission"). 

The latest referral to the EBA was triggered by an alleged legal uncertainty that occurred after a Technical Board of Appeal found the amendment to Rule 28 EPC de facto void and followed the interpretation of Article 53(b) EPC given in G 2/12 and G 2/13 (case T 1063/18). 

According to the EPO press release announcing the opinion in G 3/19, the EBA "found that a particular interpretation which has been given to a legal provision can never be taken as carved in stone, because the meaning of the provision may change or evolve over time. This meant that decisions G 2/12 and G 2/13 did not settle the meaning of Article 53(b) EPC once and for all.

"Taking account of the Administrative Council's decision to introduce Rule 28(2) EPC, the preparatory work on this provision and the circumstances of its adoption, as well as legislative developments in the EPC contracting states, the Enlarged Board concluded that new Rule 28(2) EPC allowed and indeed called for a dynamic interpretation of Article 53(b) EPC."

The interpretation of Article 53(b) EPC given in G 3/19 is said to have no retroactive effect on relevant European patents or pending European patent applications that were granted or filed before July 1, 2017.

John Podtetenieff and Mariana Zaichuk of the Munich Office coauthored this Alert.

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