Wednesday, February 06, 2019 T 1063/18 - The full decision: why Rule 28(2) is in conflict with Art.53(b) EPC and why no referral was necessary

On 7 December, the Board of Appeal posted a communication on their website wherein the decision in case T 1063/18 on the patentability of plants was summarized (see here). Yesterday, the complete written decision was issued and became available in the register. In the Decision, the Board does not only motivate in detail why Rule 28(2) EPC as it was amended is in conflict with Art. 53(b) EPC as interpreted by the Enlarged Board in G 2/12 and G 2/13, as well as why the Adm Council was not competent to adopt this Rule, as well as why no further referral was needed - the Board also explained why they consider the opinion of the Enlarged Board to be unchanged also after the Commission Notice after the amendment to Rule 28(2) EPC. Not all arguments submitted by the parties and third parties were addressed in view of the intermediate conclusions taken - so, unfortunately, whether there is a difference as to what the scope of the exclusion of "essentially biologial processes" or not, was not discussed by the Boards (one submission argued that the Commission uses a narrow exclusion (strictly 100% biological, without any techncal step) whereas the Enlarged Board uses a broad exclusion (crossing whole genomes, irrespective of whether further technical steps are also excluded): if Rule 28(2) EPC would have been maintained, that could have meant that it excluded more than was intended.
This will probably not be the last legal development on patentability of "plants exclusively obtained by means of an essentially biological process" via Art. 53(b) EPC or otherwise... 

Friday, February 01, 2019 T 2435/13 - More Broccoli: the meaning of "sexually crossing the whole genomes of plants"

In the present case, the proprietor gave his interpretation of the decisions in consolidated cases G 2/07 and G 1/08, which dealt with the question of whether conventional methods for the breeding of plant varieties should be excluded from patentability under Article 53(b) EPC. The proprietor referred to the third paragraph of point "6.4.2.3 Conclusions" that "These conventional methods included in particular those (relevant for the present referrals) based on the sexual crossing of plants (i.e. of their whole genomes) deemed suitable for the purpose pursued and on the subsequent selection of the plants having the desired traits", and the sexual crossing of whole genomes was subsequently said to be "characterized by the fact that the traits of the plants resulting from the crossing were determined by the underlying natural phenomenon of meiosis". The proprietor argued that the decisions consistently referred to "sexually crossing the whole genomes of plants" as being the key criteria for determining whether a process for the production of plants was "essentially biological" and thus excluded from patentability or not. The proprietor argued that txpression "sexually crossing the whole genomes of plants" emphasised that the conventional breeding processes referred to in the two decisions of the EBA were construed as being those involving meiotic recombination events throughout the whole genome during the pairing of homologous chromosomes. The proprietor argued that the meiosis in the claimed regenerated F1 plant (grown from a rescued embryo) which preceded a back-crossing step of the claimed method was distorted; Indeed, since the A- and C-chromosomes were not homologous and did not pair with each other, only very few homologous recombination events took place over only very limited parts of their respective genomes (one being the required transfer of the clubroot resistance trait from A-genome to C-genome). Furthermore, he argued that the genomes of the first generation of back-crossed plants (BC1 plants) produced in steps f) to h) of the claimed method could range from a CC-genome (2n=18, i.e. no Brassica rapa A-chromosome derived from the F1 plant present in the BC1 progeny) to an ACC-genome (2n=28, i.e. all Brassica rapa A-chromosomes derived from the F1 plant present in the progeny); In the former case, it was literally impossible to state that the whole genomes had been sexually crossed since no A-chromosomes were retained in the produced plant. The proprietor concluded that, accordingly, since only partial homologous recombination on limited portions of the respective genomes took place, the claimed method was not directed to a process for the production of plants involving sexually crossing the whole genomes of plants as referred to decisions G 2/07 and G 1/08, and that, consequently, decisions G 2/07 and G 1/08 did not apply and the claimed subject-matter did not fall within the exceptions of Article 53(b) EPC. The Board did not agree: its conclusion is given in reasons 12-13 and the substantiation of the conclusion in the reasons just before.

Thursday, June 29, 2017 No longer a European patent for plants or animals exclusively obtained by an essentially biological process

As we discussed in our blog of 19 December 2016, there has been a long debate about patentability of plants/animals under the EPC. 
The final (?) chapter may now be closed: the Administrative Council took a decision to amend the relevant Regulations in order to exclude from patentability plants and animals exclusively obtained by an essentially biological breeding process.  This ends the option allowed by the Enlarged Board in G2/12 and G 2/13. The new rule enters in force almost immediately on 1 July 2017.

The key change to the rules is to introduce a new paragraph to R.28 (the current content being moved to R.28(1)):

R.28(2) Under Article 53(b), European patents shall not be granted in respect of plants or animals exclusively obtained by means of an essentially biological process.

To make sure that R.27(b) cannot be used as an escape, this rule has been made subject to R.28(2):
R.27 Biotechnological invention shall also be patentable if they concern:
(a) ...
(b) without prejudice to Rule 28, paragraph 2, plants or animals if the technical feasibility of the invention is not confined to a particular plant or animal variety;
(c) ...

The full text of the press release of the EPO can be found here and is reproduced below.