Sunday, 7 April 2019

News: President referred questions to the Enlarged Board on patentability of plants exclusively obtained by essentially biological processes


Following his earlier annoucement, the President has submitted questions too the Enlarged Board of Appeal which relate to the patentability of plants exclusively obtained by essentially biological processes and to decision T 1063/18 (also here). According to a news meesage from the EPO posted last Friday, the President of the EPO seeks the Enlarged Board of Appeal to clarify the applicable legal framework.
The full text of the referral is not yet available. It will be interesting to see which clarifiation the Preseident seems to be required as one may argue that T 1063/18 has already given the answer, as that decision analyzed whether conclusion from G 2/12 needed any adaptations after the introduction of Rule 28(2) EPC subsequent to a notice from the EU Commission (no). Also, the news message below does not mention any conflicting decision, which is needed for the referral to be admissable under article Art.112(1)(b) EPC. (However, also with an inadmissible referral, the Enlarged Board may give a clarification as it did in the software decision G 3/08). So, the full text will be highly interesting, we will keep you posted!
The EPO posted a news message on the EPO website this Friday (5 April2019). The complete message reads:

Referral to the Enlarged Board of Appeal related to plant patentability

5 April 2019
Today, pursuant to Article 112(1)(b) EPC, the President of the EPO has submitted questions to the Enlarged Board of Appeal which relate to the patentability of plants exclusively obtained by essentially biological processes and to decision T 1063/18 of a Technical Board of Appeal of December 2018. In the referral the President of the EPO seeks the Enlarged Board of Appeal to clarify the applicable legal framework.
The EPO reacts to the concerns expressed by the Contracting States, the user community and representatives of civil society who are worried about legal uncertainty resulting from decision T 1063/18.
The President of the EPO considers the referral to the Enlarged Board of Appeal as an important step on the way to restore legal certainty in the interest of the users of the European patent system and the general public.
The possibility of a referral to the Enlarged Board of Appeal was presented end of March at a meeting of the Administrative Council and met with broad support.

Further information


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

2 comments :

  1. According to another blog (http://patentblog.kluweriplaw.com/2019/04/05/patentability-of-plants-epo-referral-of-decision-t106318-criticized/):

    "In the meantime, on 25 March 2019, the Chartered Institute of Patent Attorneys (CIPA) in the UK published a position paper on the patenting of plants; or as CIPA writes: ‘on the lawfulness of a number of options for addressing the conflict between decisions of the EPO Boards of Appeal (i.e. G2/12, G2/13 and T1063/18) and Rule 28(2) EPC."

    "The conclusion of the CIPA position paper:

    ‘CIPA’s position is that the above-mentioned conflict (between judicial interpretations of the EPC and Rule 28(2) EPC) should be solved in a lawful manner."
    and:
    "Whilst CIPA has no wish to prescribe any one particular solution to that conflict,
    For the reasons discussed above, our position is that, at this time:
    – there are no valid grounds upon which a further EBA opinion can be obtained under either Article 112(1)(b) EPC (Option A) or Article 112(1)(a) EPC (Option C);
    – there are also no valid grounds upon which the EBA could be persuaded (by the Commission Notice) to arrive at an interpretation of Article 53(b) EPC that differs from that set out in G2/12 and G2/13; and
    – amendment of Article 53(b) EPC under Option B would be unlawful, regardless of whether that amendment were made under Article 33(1)(b) EPC (which would be unlawful under the EPC) or under Article 172 EPC (which would be unlawful under EU law, and which might also misalign the EPC with a future ruling of the CJEU)

    Our position is therefore that the only viable options at this time are as follows.
    – Accept the current interpretation of Article 53(b) EPC (Option D).
    – Amend EU law and then the EPC (Option E).
    – Await the issuance of a ruling of the CJEU (Option F).’"
    [end citation]

    It links to the CIPA paper on http://www.cipa.org.uk/_resources/assets/attachment/full/0/117604.pdf

    ReplyDelete
    Replies
    1. Interesting position paper. It confirms that there may be an admissibility issue with the referral, and it seems to agree with the analysis and conclusions of T 1063/18 as to G 2/12 and Art.53(b) EPC as well as the legal status of the Commission Notice (not such status that it would allow an amendment by the Council under Art.33(1)(b) EPC rather than by the Conference under Art. 172 EPC).
      Which option would have a chance, which would have the best chance? Maybe option E: amend EU legislation (a new Directive) and then amend under Aert.33(1)(b).

      To be continued!

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