The verdict of the Enlarged Board of Appeal of the EPO on the patentability of plants came as unexpected. Time will tell if it will also mark the ending point of a long-lasting saga. The Enlarged Board of Appeal (EBA) of the European Patent Office (EPO) delivered 14/05/2020 an eagerly awaited opinion in case G13/19 (Pepper), concerning the patentability of plants obtained from essentially biological processes.
The issue of the patentability of plants is a legal dilemma that kept jurists busy throughout the last decade up until this last, and quite surprising, outcome, as the EBA concluded that plants and animals obtained by essentially biological processes are not patentable, thereby deviating from its prior interpretation. The EBA added one more piece to a tortuous yet engaging saga that has been gaining great visibility, as the matter concerned is a highly sensible one, lying within the boundaries of plant variety rights and patents.
Indeed, whichever is the interpretation adopted, Article 53 (c) EPC is capable of directly affecting the strategic plans of companies and stakeholders operating in the sector, both within and outside the European Union. Further, the saga brought up a debate among jurists concerning the scope of protection of patents and plant variety rights, two intellectual property right systems which, being closely intertwined, may easily collide giving rise to regulatory voids and legal uncertainty. Therefore, the consequences will be either in terms of economic impact, as companies will be called for a reshaping of their business strategies, and in terms of legal discourse as by shading light over this legal conundrum, a debate on the boundaries between plant variety rights and patents is likely to be furtherly spurred.
As any respectable saga, the one at hand also had its peaks and twists. It started to get gripping in 2015, when the EBA ruled that products obtained by essentially biological processes, such as plants, are patentable. On the basis of this Decision, a broccoli and tomato variety were patented (cases G/12 and G/13, also known as tomato and broccoli II), causing a great tumult within the public, the breeding industry and EU institutions. In response, the European Commision took position on the matter by issuing a Notice, on 8 November 2016, stating that, according to the intended interpretation of the Biotech Directive 98/44, plants obtained by essentially biological processes should indeed not be patentable. With the aim of implementing the notice thereof, the administrative council of the EPO amended Rules 27 and 28 of the Implementing Regulations to the EPC.
However, the BoA of the EPO, by decision of 5 December 2018 T 1063-18 (pepper), referred to above, stated that the new rule 28(2) was void for being in conflict with article 53(b)(as interpreted in tomato and broccoli II), arguing that the EPC takes precedence over the implementing rules and concluding that patents on plants may therefore be granted. At this point, the President of the EPO referred the decision to the EBA, calling it to restore clarity by issuing a final opinion on the patentability of plants exclusively obtained by essentially biological processes, taking into account the recent legal developments.
"The introduction of Rule 28(2) EPC, the legal and factual situation underlying decision G 2/12 (supra) has substantially changed. This amendment constitutes a new aspect or consideration which has arisen since the EPC was signed which may give reason to believe that a grammatical, and restrictive, interpretation of the wording of Article 53(b) EPC conflicts with the legislator's aims, whereas a dynamic interpretation may bring a result that diverges from the wording of the law " (G0003/19 § XXVI.4)
The response from the EBA, that plants obtained by essentially biological processes are not patentable, has come as a surprise insofar as it reviewed an interpretation of the article 53(b), that was deemed cemented. Indeed, the EBA held that the scope of a legal provision, namely article 53(b), is not supposed to be carved in stone insomuch as legal and social context shifts, and concluded that new rule 28(2) called for a dynamic interpretation of Article 53(b) EPC, which is justified in the light of the recent legal developments (namely, the statements and positions of the european institutions on the interpretation of the EPC and the EU Biotech Directive 98/44, all agreeing on the exclusion of patentability).
Having said that, it might be too early to say whether this opinion represents the last chapter of such a long-lasting saga. What is sure is that the outcome of the case will encourage further debate as, besides the implications concerning the substantial aspects of the law and the consequences in economic terms on the agribusiness sector, it is likely that political reflections on the delicate issue of the relationships between the EBA and the administrative council of the EPO will raise.
Meanwhile, official reactions are coming forward. The President of the EPO, António Campinos, praised the opinion for finally bringing “legal certainty for patent applicants , and the general public, on what is a sensitive and complex issue that has legal, societal and economic implications". A quest for clarity that the EBA seems to have acknowledged by deciding to not accord retroactive effect to its decision on the european patents granted or applied for before 1 july 2017.
A consensus at institutional level on the need to bring the EPC in line with EU law seems to emerge, however the experience calls for cautious. It still remains to be seen if this is the finale or just another twist in the broccoli/tomato/pepper saga.
● Plants and animals directly obtained by essentially biological processes are not patentable;
● The introduction of a new Rule in the Implementing Regulations can foster a dynamic interpretation of the provisions of the EPC, especially when the rule thereof is the expression of broader legal developments;
● The EBA established that decision in case G13/19 shall not have retroactive effect with respect of european patents granted or applied for before July 2017.
 Article 53(b) of the EPC, establishing the exceptions to patentability, states that European patents shall not be granted in respect of, inter alia: “plant or animal varieties or essentially biological processes for the production of plants or animals; this provision shall not apply to microbiological processes or the products thereof”.