EPO Plant Patent-Eligibility Update: Political Pressure Brings Further Uncertainty For Applicants

Recent weeks have seen important developments in the debate on patent-eligibility of plants in Europe, with the EPO's Boards of Appeal and its President, Administrative Council and member states pulling in opposite directions. The President has now referred questions, published today, to the Enlarged Board of Appeal, but the admissibility of the referral is uncertain, so it is unclear how or when the Enlarged Board will react. Applicants in this field will therefore face further delay and uncertainty. More generally, this is also a highly unusual, polarised situation that highlights the potential for conflict between different branches of the European patent system. Fortunately, however, this issue only directly affects some plant-related applications, not all that generally relate to plants in some way.

In December 2018 (reported here), EPO Technical Board of Appeal 3.3.04 held Rule 28(2) EPC invalid as it believed it to be in conflict with Article 53(b) EPC. This was confirmed in a reasoned decision in February 2019. Article 53(b) EPC renders patent-ineligible plant and animal varieties and essentially biological processes for the production of plants and animals and has been controversial, resulting in the "Broccoli and Tomatoes II" decisions (G2/13 and G2/12) of the Enlarged Board of Appeal in 2015. These indicated that, although essentially biological processes for the production of plants are patent-ineligible according to Article 53(b) EPC, the products of such processes are not ineligible just because the processes could not be patented. If other conditions such as novelty and non-obviousness were complied with, a plant obtained by breeding could be patented.

In 2016, the European Commission issued a notice that was followed in 2017 by the EPO's Administrative Council via implementation of Rule 28(2) EPC, to the effect that "European patents shall not be granted in respect of plants or animals exclusively obtained by means of an essentially biological process". Although generally not impacting plants obtained by biotechnological means, including techniques such as CRISPR/Cas, this made it almost impossible to obtain a patent to a plant obtained by breeding. Moreover, Rule 28(2) EPC purported to exclude from patentability the same plants that the Enlarged Board had held to be patent-eligible in the Broccoli and Tomatoes II decisions.

The Technical Board of Appeal's decision in case T1063/18 changed this again. The Board found that...