T1063/18 Plant patentability provisions in the EPC - Rule 28(2)EPC without effect
I. On February 5th, a Board of Appeals published the reasons for the decision of the T1063/18 case, which refers to patentability of plants and in particular to the conflict of Article 53(b)EPC and Rule 28(2)EPC.
Article 53 (b) EPC 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 […].
Rule 28 (2) of the Implementing Regulations to the EPC states: 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.
In previous decisions by the Enlarged Board of appeals (G1/12 and G1/13), it was ruled that the exclusion of essentially biological processes for the production of plants in Article 53(b) EPC did not have a negative effect on the allowability of a product claim directed to plants or plant material. A Board of Appeals, in application of this decision subsequently ruled that R28(2)EPC thus was in conflict with Article 53(b)EPC.
II. In the present case T1063/18, the underlying claim was directed to a fruit type pepper plant and the Examining Division refused the claim on the basis of R28(2)EPC.
The Board of Appeals overruled this decision and states (item 23. of the decision): “Since Rule 28(2) EPC excludes plants or animals exclusively obtained by means of an essentially biological process from patentability, its meaning is in conflict with the meaning of Article 53 (b) EPC as interpreted by the EBA.”
The Board further states that Rule 28(2) EPC reverses the view of the Enlarged Board of Appeals on Article 53(b)EPC and can therefore not be interpreted in a way that no contradiction is possible. Also as the EPC prevails over the Implementing Regulations the interpretation of Article 53 (b) EPC by the Enlarged Board of Appeals is applicable.
III. To conclude, following the present decision one can assume that it will be difficult for Examining Division to base refusals of EP patent applications on Rule 28(2)EPC.
This is for information purposes only and does not constitute legal advice.