Stay On EPO Proceedings Involving Plants Or Animals Obtained By Essentially Biological Processes

If your European patent/patent application involves products of essentially biological processes, such as crossing of whole plant or animal genomes, proceedings may be stayed.

The European Patent Office (EPO) has issued a Notice1 advising that proceedings before its examining and opposition divisions will be stayed if they depend entirely on the patentability of plants/animals, or plant/animal parts (eg seeds, fruit) obtained by "essentially biological processes". This is because directly opposing views have been reached by the EPO's Enlarged Board of Appeal (EBoA), (its highest level of review) in a 2015 decision, versus the view set out by the European Commission in a Notice2 issued on 3 November 2016 on whether this type of product should be patentable in Europe. The EPO want time for discussion and consideration of the effect of this divergence.

The EU's Biotech Directive3 from 1998 aimed to harmonise member states' laws and clarify what is or is not patentable in Europe in the field of biotechnology. In 1999 the provisions of this Directive were adopted directly into European patent rules4.

The directive affirmed, for example, that isolated biological material is patentable even if it has occurred previously in nature5 It also confirmed that plants or animals are patentable if the technical feasibility of the invention (e.g. a genetic modification) is not confined to a particular plant or animal variety6 However, "essentially biological processes" for the production of plants and animals7, i.e. classical breeding comprising crossing and selection are not patentable, nor are individual plant or animal varieties.

In 20108 the EPO's EBoA considered whether a process for sexually crossing the whole genomes of plants - that being an essentially biological process excluded from patentability - became patentable if the process is enhanced by a technical means (for example, by use of certain markers) to enable or assist the crossing and subsequent selection of plants. The EBoA concluded such processes remain unpatentable.

In 20159 the EPO's EBoA was asked to consider whether products (e.g. plants/animals or plant/animal parts such as seeds, fruit) obtained by the unpatentable processes considered in 2010 could themselves be patentable. It was identified that the European Patent Rules did not state that such products were unpatentable and consequently the EPO's EBoA decided they must be patentable products. This decision was intended to give...

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