Sunday, 31 March 2019

News: President will ask Enlarged Board for opinion on patentability of plants exclusively obtained by essentially biological processes


In the latest meeting of the Administrative Council, the President expressed his view that referral of the case to the Enlarged Board of Appeal is justified and necessary, in view of the legal uncertainty caused by decision T 1063/18 (also here). 
The EPO posted a news message on the EPO website this Friday (29 March 2019). The complete message reads:

EPO Contracting States discuss next steps regarding the patentability of plants obtained by essentially biological processes


29 March 2019
In the 159th meeting of the Administrative Council, the representatives of the 38 EPO Contracting States together with the European Patent Office discussed the need to find a solution in the short term following the decision T 1063/18.
The Contracting States expressed their concerns with regard to the legal uncertainty caused by decision T 1063/18. The President of the EPO expressed his view that  a President's  referral of the case to the Enlarged Board of Appeal is justified and necessary. The aim is to obtain an opinion from the Enlarged Board of Appeal on the patentability of plants exclusively obtained by essentially biological processes, hereby considering recent legal developments (interpretations and statements of the European Commission, the EU Council, European Parliament and EPO's Administrative Council on the interpretation of the European Patent Convention and the EU Bio-Directive, all of them concluding that there should be no patentability in these cases).
The President's proposal received  broad and overwhelming support from almost all Contracting States. President António Campinos announced that the EPO will proceed swiftly  to submit the referral.  The EPO endeavours to restore legal certainty fully and speedily in the interest of the users of the European patent system and the general public.

Further information


Photo "Peppers" by Melvin "Buddy" Baker obtained via Flickr under CC BY 2.0 license (no changes made).

10 comments :

  1. May I ask what the legal basis for such a President's referral would be? I only see Art. 112(1)(b) EPC, which allows the President to refer a point of law to the EBoA "where two BoA have given different decisions on that question".
    Since the amendment of Rule 28, there has been one single decision (T1063/18). I would thus tend to think that the EBoA would not admit it arguing that there are not different decisions (as for G3/95 and G3/08b).

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    1. I agree. The referral shall be held inadmissible. Any progress will delay further.

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  2. Stop the nonsense3 April 2019 at 08:16

    It seems that the president and the AC are enacting a repeat of the pressure on the EBA as in G 2301/15 and G 2301/16.

    Here it is worse, as they want to twist the arm of the EBA, by telling it what decision on the interpretation of the EPC they want to have.

    If one needed a further example that the independence of the Boards is a paper tiger, here it is. And all this whilst the independence of the Boards is on the verge of being discussed before the German Federal Constitutional Court.

    If the aim is to take into account changes in society the only clean way to do is to amend Art 53, b)! But this is more complicated.

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    1. It should not be more complicated if it is tru what the news message says: "overwhelming support from almost all Contracting States".

      So: change the article!

      The T-decision already explained why the interpretation of the Article as given by G 2/12 does not change after the change of the Rule. One can expect the Enlarged Board to confirm this. Are we really better off if they do?

      Lastly, separation of powers requires the Boards and Enlarged Board to apply the law and to interpret the law, not to de factor establish new law (by finding a politically wanted but legally incorrect interpretation).

      Waiting for the Enlarged Board to confirm what can be expected but is not wanted is not the way to go. The only way is to change the Article. If politocs really wants, there should not be a problem to do so!

      JP

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    2. Why not let a Court from an EU state refer to the Court of Justice of the European Union (CJEU)? They are the authority on interpretation of the BioTech Directive, not the EU Commission, not the EU parliament, not the EPO President, not the EPO Administrative Council, not the (Enlarged) Boards of Appeal.

      In view of Rule 26(1) EPC, such a referral to the CJEU seems appropriate.

      If the CJEU decides that the content of Rule 28(2) is the valid interpretation of Art.53(b), it is settled.
      If they decide it is not, the only route to go is to change Art.53(b) EPC.

      JP

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  3. We don't know yet what the question will be, so it seems a bit early to say that the referral is inadmissible.

    Btw, why would the CJEU have the final say on this? Art. 53(b) EPC has been worded as it is since 1973, which was long before the Biotech directive.

    The Biotech directive has been incorporated into the EPC by amending the implementing regulations. T 1063/18 seems to say that such an amendment can have no consequences on the interpretation of Art. 53(b). So isn't the problem much bigger than we think?

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    1. "Btw, why would the CJEU have the final say on this? Art. 53(b) EPC has been worded as it is since 1973, which was long before the Biotech directive."

      because the reason for introducing Rule 28(2) was the Notice of the Commission on the interpretation of the BioTech Directive and the influence that should have on the interpretation of Art.53(b)

      T 1063/18 said that Rule 28(2) is not valid.

      Yes, the problem is big if one wants to forbid what is allowed by Art.53(b). The Enlarged Board made its point in Broccoli and Tomatoes II. The introduction of Rule 28(2) aimed to overturn that decision. As long as the EPC is what is now is, with Art.53(b) as it now is, the wanted effect of Rule 28(2) cannot be legally valid. So, simple solution: change the Article - but that is a really big problem (it seems to be as much wanted as the British wanting the Brexit, or not wanting it, noone knows).

      JP

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    2. @JP:
      You wrote earlier: "If the CJEU decides that the content of Rule 28(2) is the valid interpretation of Art. 53(b), it is settled."

      You will agree with me that the CJEU cannot decide how Art. 53(b) EPC must be interpreted. Art. 53(b) EPC is not EU law.

      So you probably meant to write "If the CJEU decides that the content of Rule 28(2) is the valid interpretation of the Biotech Directive, it is settled."

      Now my question is how such a CJEU decision could have any effect on Art. 53(b) EPC, which is way older than the Biotech Directive.

      If the CJEU decision would have no effect on Art. 53(b) EPC, then it seems to me that the conflict between Rule 28(2) and Art. 53(b) that T 1063/18 sees would remain.

      You may have missed my larger question about the validity of all the Rules that were intended to implement the Biotech Directive. Why would any of them be valid (or rather, contribute anything to what the Articles say)?

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    3. Rule 26 is not in conflict with Art.53. Rule 28(2) is (at least according to T 1063/18, but their reasoning seems rock solid). Big difference.

      Indeed, "If the CJEU decides that the content of Rule 28(2) is the valid interpretation of the Biotech Directive, it is settled.": settled in the sense that the conflict remains. And can only be solved by amending the Article, by a Conference undert Art.172.

      JP

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    4. OK.

      So if the CJEU decides that Rule 28(2) is not the valid interpretation of the Biotech Directive, then you are saying that amendment of Art. 53(b) is the only route (3 April at 9:11).

      And if the CJEU decides that Rule 28(2) is the valid interpretation of the Biotech Directive, then you are saying that the conflict can only be solved by amending Art. 53(b) (4 April at 8:47).

      So we agree that a decision by the CJEU makes no difference and is not going to help here.

      Delete

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