Tuesday, 11 December 2018

Hot News: T 1063/18 - Rule 28(2) EPC in conflict with Art.53(b) as interpreted by the EBoA in G 2/12 and G 2/13.

Hot News: Communication from the BoAs (link):

Decision in case T 1063/18 on the patentability of plants

7 December 2018

Case T 1063/18 concerns the appeal by the applicant against the decision of the examining division to refuse European patent application no. 12 756 468.0 (publication no. EP 2 753 168) for the sole reason that the claimed subject-matter falls within the exception to patentability according to Article 53(b) and Rule 28(2) EPC (here: plants exclusively obtained by means of an essentially biological process).

At the oral proceedings, which took place on 5 December 2018, Technical Board of Appeal  3304, in an enlarged composition consisting of three technically and two legally qualified members, held that Rule 28(2) EPC (see OJ 2017, A56) is in conflict with Article 53(b) EPC as interpreted by the Enlarged Board of Appeal in decisions G 2/12 and G 2/13. The Board referred to Article 164(2) EPC, according to which the provisions of the Convention prevail in case of conflict with the Implementing Regulations, and decided to set the decision under appeal aside and to remit the case to the examining division for further prosecution.

The written decision containing the board's full reasons is expected to be issued early next year.

We will post another blog as soon as the written decision is available The file wrapper can be found here. Photo "Farmer's Market Summer Colors" by Luxbao obtained via Flickr under Public Domain Mark 1.0

Update 19-12-2018: Minutes from Oral proceedings before the Board available

The minutes from the oral Proceedings of 5 December 2018 are available in the EP Register (here) and are cited in full below (emphasize aded by the blog editor).

Appeal number T1063/18-3.3.04

Application No.: 12756468.0
Applicant: Syngenta Participations AG

Minutes of the oral proceedings
of 5 December 2018

Composition of the Board:

Chair: G. Alt
Members: R. Morawetz
                 P. de Heij
                 A. Chakravarty
                 L. Bühler

Start of oral proceedings: 09:30 hours
End of oral proceedings:  13:00 hours

 Present on behalf of the appellant:

Mr M. A. Kock, authorised by an authorisation dated 19 October 2018, and Mr N. Amelot, professional representatives, both identified by EPO-identity card.

The chair declared the oral proceedings open. She noted that the board had been enlarged pursuant to Article 21(3)(b) EPC and Article 9 RPBA. She then summarised the relevant facts as they appeared from the file. The appellant confirmed that they had received all third parties observations on file.

The chair stated that the board had taken note of the third parties observations. The chair also stated that the board intended to decide whether the decision to refuse the application was correct.

The chair ascertained the appellant ’s opening requests which the board understood to be as follows.

The appellant requested:

- as the main request: That the decision under appeal be set aside and, should the board remain of the opinion that the grounds raised in the communication of the board prevented the application from being granted, the case be remitted to the examining division for further prosecution on the basis of the set of claims filed on 7 August 2015;

- as auxiliary request 1: Should the board not be in a position to take a decision on the validity and/or scope of Rule 28(2) EPC according to the main request or see points of law of fundamental importance, questions be referred to the Enlarged Board of Appeal as suggested in the statement of grounds of appeal dated 5 April 2018, including a question to clarify the apparent contradiction between the definitions of essentially biological processes under G 2/07 and under Rule 27(c) EPC and the Biotechnology Directive 98/44, as further construed by the Commission Notice;

- as auxiliary request 2: Should the board be minded to dismiss the appeal without deciding on the appellant's main request to set aside the decision of the examining division, the following question be submitted to the Enlarged Board of Appeal: "Is a Board of Appeal entitled to reject an appeal on grounds not related to the appeal without first deciding on the Appellant's Main Request to set aside the decision of the Examining Division?";

- as auxiliary request 3: Should the board intend to reject the request to remit the case to the examining division for further prosecution on the basis of the set of claims filed on 7 August 2015, a patent be granted on the basis of an amended set of claims filed as auxiliary request 4 with the letter dated 26 October 2018.

The chair summarised the appellant’s different lines of argument presented in writing. She noted that one of these lines was that Rule 28(2) EPC was in conflict with Article 53(b) EPC, as interpreted by the Enlarged Board of Appeal in decisions G 2/12 and G 2 /13, and that therefore Article 164(2) EPC applied. She invited the appellant to first present comments on this line of argument.

The appellant presented their arguments on the matter and stated that they agreed with the observations of the third party Konig, which the board should take into consideration, and had nothing to add to the comments provided by Konig on the observations of the third party ESA (European Seed Association). [Note: both third parties made multiple submissions - see EP Register]

After deliberation, the chair announced that the board was of the opinion that Rule 28(2) EPC was in conflict with Article 53(b) EPC, as interpreted by the Enlarged Board of Appeal in decisions G 2/12 and G 2/13, and that in accordance with Article 164(2) EPC the provisions of the Convention prevailed.

Next, the appellant presented their arguments in support of the request for remittal to the examining division. These were, inter alia, that the objections of lack of inventive step and lack of clarity had been raised by the board and that they had the right to have these objections considered by two instances.

After another break for deliberation by the board, the chair stated that the board would not order the remittal of the case at the present stage of the oral proceedings, but would reconsider the request after the appellant had been heard on the issue of inventive step of the subject-matter of claim 1 of the main request. There was no loss of instance for this issue because the examining division had provided an opinion on inventive step.

As regards document D1 and the San Luis Ancho pepper disclosed therein, the appellant submitted that it was not known whether the features in claim 1 defining the extreme dark green colour of the fruit at immature harvestable state, i.e. the chlorophyll A and chlorophyll B, lutein and violaxanthin  content, were inherent features of the San Luis Ancho pepper. The dark green colour of the pepper as not necessarily linked to these features. An analysis of the chlorophyll and carotenoid content of the San Luis Ancho pepper could provide the relevant information, however, the appellant's experts had not had sufficient time to carry out such an analysis.

The proceedings were again interrupted for deliberation of the board. After resumption, the chair announced that the board had reconsidered the request for remittal and had decided to remit the case to the examining division for further prosecution. This would allow the appellant to carry out an  analysis of the San Luis Ancho pepper to support their arguments on inventive step.

The chair asked the appellant to state their final requests. These were the same as their opening requests.

The chair asked the appellant if they had any further comments or observations. They had none.

The chair then closed the debate and announced the following decision of the board:

1. The decision under appeal is set aside.

2. The case is remitted to the examining division for further prosecution on the basis of the set of claims of the main request, as filed on 7 August 2015.

The chair then closed the oral proceedings.

The Minute Writer: P. de Heij
The Chair: G. Alt


  1. Interesting... the Administrative Council made an amendment to the Rules to bring the EPC (via its Rules) in line with (at least for all EU states) higher-ranking international law (or at least the Commission's interpretation of it), and a Technical Board overrules the Administrative Council's new legal principles? Sounds odd... I also donot see why an interpretation given by the Enlarged Board of Appeal prior to the amendment to Rule 28(2) can be decisive, especially as the amended Rule 28(2) explicitly indicates that it is an implementation=interpretation of Art.53(b) - the one that the Enlarged Board of Appeal interpreted in G 2/12 and G 2/13 when there was no such explicit implementation=interpretation by the law maker in the law.

    Is this decision alone enough for making the President of the EPO or the President of the Boards of Appeal decide on an opinion by the Enlarged Board, as to whether their interpretation as given in G 2/12 and G 2/13 still holds after Rule 28(2) got amended, or whether their interpretation is to be adjusted in view of the amendments made (and the input from the Commission)?

    The legal situation has not been as uncertain as now since the first Broccoli and Tomatoes cases... what some pepper can do!


  2. By the way, the amendment made to Rule 28(2) EPC per 1 July 2017 was in view of the interpretation given by the Enlarged Board of "essentially biological processes" in Broccoli and Tomatoes I & II and on an interpretation given by the Commission in their Notice wherein they conclude that the EBOA ignored the legal history of the BioTech Directive. But was the Commission using the same meaning of "essentially biological processes"? Did they also consider the exclusion of the processes to extend to not only processes that are purely crossing and selection, but to any non-biological process wherein the whole genomes of plants are crossed? To me it seems that they had a narrower exclusion in mind than what the EBOA concluded in G 1/08 and G 2/07, headnotes 1 and 2.


  3. This is really an interesting decision. Interestingly, the BoA has decided on the issue without posing a question to the EBoA. In my view, they could have asked the EBoA for an opinion because a conflict between rules and articles of the epc does seem to have some importance.

    If the the view of the present BoA is correct, this would mean rule 28(2) epc would have to be amended. Again.

  4. Did the Adm Council not check with the Enlarged Board whether the amendment to Rule 28(2) was allowable?


  5. Looking forward to the full decision! Especially Interesting to see the reasoning why the interpretation of the Enlarged Board (just a court) is considered to still be valid after the Administrative Council (the legislator) changes the law (the Regulations being an integral part of the EPC).

    Will be an Interesting 2019!

  6. To me, an explanation of the BoA would be interesting why it decided not to pose a question about the conflict to the EBoA. An answer of the EBoA would have rendered the legal situation for applicants/proprietors more lucid. I am looking forward to 2019!

    1. Agree. This Board unneccesarily increased the level of confusement and the degree of uncertainty for third parties as well as applicants and proprietors. The Board could and should have prevented to create this situation by Referring to the Enlarged Board - to make them confirm that G 2/12 and G 2/13 still hold after the -in that case invalid- Rule amendment, or to indicate that G 2/12 and G 2/13 no longer hold after the -by the law maker amended, and hence valid- Rule amendment. The Board should have accepted the risk of a formal inadmissibility objection - but history has shown that that does not prevent the Enlarged Board from giving their opinion anyhow if the topic is of high importance (see G 4/08, the inadmissible software referred by the President).

      What will the next steps be? Another amendment of the Rule by the Adm Council - which will (in voew if the Commission Notice) need to have the same scope as the currect R.28(2) but would need to be phrased in a different manner than by referring to Art.53(b) EPC? Or a referral by the President? Or a referral by a different Board - there are plenty of cases that hinge on the same issue?