G3/19 Hierarchy of provisions in the EPC - Follow-up of Decision T1063/18 relating to Rule 28(2) EPC
I. The T1063/18 case (see our February 2019 IP Alert), refers to patentability of plants and in particular to the conflict of Article 53(b) EPC and Rule 28(2) EPC. The Board of Appeals decided : “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.
II. In order to clarify the scope of the decision, the President of the European Patent Office remitted the following question to the Enlarged Board of Appeals :
“1. Having regard to Article 164(2) EPC, can the meaning and scope of Article 53 EPC be clarified in the Implementing Regulations to the EPC without this clarification being a priori limited by the interpretation of said Article given in an earlier decision of the Boards of Appeal or the Enlarged Board of Appeal?
2. If the answer to question 1 is yes, is the exclusion from patentability of plants and animals exclusively obtained by means of an essentially biological process pursuant to Rule 28(2) EPC in conformity with Article 53(b) EPC which neither explicitly excludes nor explicitly allows said subject-matter?"
III. In the wake of the referral, the President of the European Patent Office has decided that all proceedings before the EPO examining and opposition divisions in which the decision depends entirely on the outcome of the above referral, will be stayed ex officio until the Enlarged Board of Appeal issues its decision. Search proceedings are not stayed.
IV. To conclude, the question whether patent applications may be refused by Examining Divisions based on Rule 28(2)EPC is now open until the decision by the Enlarged Board of Appeals.
This IP Alert is for information purposes only and does not constitute legal advice.