Decision G3/19 relating to the non-patentability of plants and animals obtained by means of an essentially biological process..
Further to the T1063/18 case, which refers to patentability of plants and in particular to the conflict between Article 53(b) EPC and Rule 28(2) EPC (see our IPalert of February 2019 and May 2019), and 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?
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?"
The Enlarged Board of Appeal, by a decision of 14 May 2020 (G3/19), states that : “Taking into account developments after decisions G2/12 and G2/13 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.”
To support this decision, the Enlarged Board of Appeal highlights that a significant amount of contracting states have aligned their national provisions to the content of Rule 28(2) EPC.
This decision thus overturns the previous decision G2/12 and G2/13 and gives a new interpretation of Article 53 (b) EPC in view of Rule 28(2) EPC.
This interpretation of Article 53 (b) EPC does not apply to the European patents granted before 1st July 2017 (date of Rule 28(2) EPC entry into force) and for European patent applications which were filed before that date and are still pending (no retroactive effect).