G3/19: An end to the saga…
On 14th May the Enlarged Board of Appeal issued its opinion on the questions referred in case G3/19, otherwise known as the ‘Pepper’ case. HGF have been following the case with interest, and attended the original Board of Appeal hearing which lead to the referral, our last update can be found here.
The opinion marks the potential end to a saga which has created legal uncertainty in the field of plant and animal breeding and selection for over a decade. The issues began back in 2007 when the first referral to the Enlarged Board was made on the subject. This case became known as the infamous ‘Broccoli I’ decision of G2/07 and the subsequent related decision of ‘Tomatoes I’ of G1/08 . Enlarged Board of Appeal decisions usually produce final and binding decisions on issues of legal interpretation, however the tale of broccoli and tomatoes rumbled on to create two more subsequent referrals; G2/12 and G2/13 were consolidated and the decisions were issued together in 2015. These decisions, however, created controversy in that they essentially stated that the exclusion of essentially biological processes for the production of plants in Article 53(b) EPC does not have a negative effect on the allowability of a product claim directed to plants or plant material produced from an essentially biological process.
Although welcomed by some, this decision seemed rather incongruous in forbidding claims covering processes of production of plants and animals with essentially biologically steps, yet allowing the claims to the products produced from such processes, thereby allowing companies to work around the decision. The decision furthermore raised concerns as to whether the patent system was essentially allowing patents to cover varieties and breeds of plant, thereby encroaching on Plant Breeders Rights. Following the decision, the European Parliament expressed concern that the decision could spark more patents on natural traits of plants introduced in new varieties and called on the European Commission (EC) to review the matter, which it subsequently did. The EC issued a notice  in 2016 stating that it could not be interpreted from the drafters’ original intention when preparing the EPC to allow product claims to plants or animals produced by essentially biological processes. This strongly indicated that the EC believed decisions G2/12 and G2/13 to be incorrect and contrary to the Biotech Directive, but the notice was non-binding on the EPO. Nevertheless, the Administrative Council of the EPO, under pressure from lobbying groups, especially in the Netherlands, felt the need to act and eventually did so by amending Rule 28 EPC to add part (2) stating that:
‘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.’
Although the AC intended to clarify the issue, this direct amendment of the EPC was regarded by many as ultra vires given that two Enlarged Board of Appeal “G” decisions, regarded as the highest authority within the EPO, were already in place stating that such claims were patentable. The rules of the EPC were now in direct conflict with the G decisions. Given that the G decisions were issued in 2015, and the rule change was implemented only two years afterwards in summer 2017, it was only a matter of time before a case came up which contained relevant claims covering plants produced by essentially biological processes. That case was the ‘Pepper’ case filed by Syngenta, (one of the applicants on the original broccoli filing), which eventually gave rise to the Board of Appeal decision T1063/18  and the referral G3/19.
In decision T1063/18, the Board of Appeal held that the jurisprudence of the Enlarged Board of Appeal took precedence over this new Rule 28(2) EPC. The Board held that, in line with Article 164(2) EPC, decisions G2/12 and G2/13 should be followed in preference to the Rule 28(2) EPC, thus allowing claims to plants produced by essentially biological processes and rendering the rule void. This decision was welcomed by IP professionals who, on the whole, felt that the introduction of Rule 28(2) EPC was not in accordance with EPC order of precedent.
However, the relief was short-lived, and as expected, a referral to finally decide the issue was made to the Enlarged Board of Appeal . However, the peculiarities continued in that the referral was unusually made by the EPO president himself. The president stated that the referral was to ‘restore legal certainty fully and speedily in the interest of the users of the European patent system and the general public’. This act of referral in itself created controversy because such a referral is only allowable in certain circumstances that arguably were not satisfied here; namely the existence of conflicting Board of Appeal decisions. Previous referrals by EPO presidents have fallen foul of this requirement, and been deemed inadmissible, such as in G3/95. The questions referred by the President in G3/19 were as follows:
- Having regard to Article 164(2) EPC, can the meaning and scope of Article 53 EPC be clarified in the Implementing Regulations to the EPC without this clarification being a priori limited by the interpretation of said article given in an earlier decision of the boards of appeal or the Enlarged Board of Appeal?
- If the answer to question 1 is yes, is the exclusion from patentability of plants and animals exclusively obtained by means of an essentially biological process pursuant to Rule 28(2) EPC in conformity with Article 53(b) EPC which neither explicitly excludes nor explicitly allows said subject-matter?
The opinion issued this week by the Enlarged Board of Appeal is surprising to many patent attorneys, and somewhat disappointing for many patent applicants, in that it upholds the controversial Rule 28(2) EPC and goes against T1063/18.
The opinion states that the referral was admissible, and that plants and animal products produced by essentially biological processes are not patentable. In fact, at point XXVI.8, the opinion states ‘The Enlarged Board accordingly abandons the interpretation of Article 53(b) EPC given in decision G2/12 (supra), and in the light of Rule 28(2) EPC holds that the term “essentially biological processes for the production of plants or animals” in Article 53(b) EPC is understood and applied as extending to products exclusively obtained by means of an essentially biological process or if the claimed process feature defines an essentially biological process’. This may be the first time that an Enlarged Board of Appeal has gone so directly against previous Enlarged Board jurisprudence (G2/12 and G2/13). The EPO press release attempts to explain this by saying that Article interpretations may change over time:
‘On the merits of the referral, the Enlarged Board endorsed its earlier findings on the scope of Article 53(b) EPC, which were based on the classical (i.e. the grammatical, systematic, teleological and historical) methods of interpretation. However, the Enlarged Board found that a particular interpretation which has been given to a legal provision can never be taken as carved in stone, because the meaning of the provision may change or evolve over time. This meant that decisions G 2/12 and G 2/13 did not settle the meaning of Article 53(b) EPC once and for all’
Such a precedent will surely be used in later appeals and referrals to argue that any issue already decided by the Enlarged Board is always open to re-evaluation. There is also speculation that the only reason the referral was allowed and discussed by the Board was because it was made by the EPO President and pressure was applied; in more typical situations such a referral would be unlikely to be permitted. The opinion does seem to suggest that the President’s questions were inadmissible in the way they were formulated, but the Enlarged Board has nonetheless answered them. For example, at section II.6 the opinion states ‘Question 2 already contains, in thinly disguised form, the answer that it seeks’, and on page 27, the questions were actually re-formulated by the Board. Some commentators have suggested that this calls into question the independence of the Board of Appeal EPO, and the undue influence that can be applied by the President of the EPO.
Whilst the route to this opinion may be unsatisfactory, and even viewed as unlawful by some, the issuance of an EPO opinion upholding Rule 28(2) seems to be the easiest way to arrive at a conclusion to this saga, which will be favourable to many member states and plant breeders, and is an opinion which finally resolves the somewhat awkward (but potentially favourable to applicants) situation of having the process prohibited and the product of the process allowable.
Notably, the opinion does not apply retrospectively to European patents granted before 1st July 2017 when Rule 28(2) EPC was introduced, and applications filed before that date that are still pending. Ironically, this presumably means that the original Pepper application held by Syngenta that gave rise to G3/19 should still be allowed to proceed with its claims directed towards pepper plants produced by an essentially biological process. Indeed, it appears that this case has been remitted back to the Examining Division for further examination of the Main Request .
Many hope that this opinion finally provides legal certainty for applicants in the field of AgBio technologies. However, this remains to be seen, especially now that the Enlarged Board have left the door ajar for the scope of Article 53(b)EPC to be subject to ‘dynamic interpretation’ that may ‘still be subject to later developments, be they legal, or even practical or factual’ [XXI].
This article was prepared by HGF Senior Patent Attorney Ellie Purnell. If you would like further advice on this or any other matter, please contact Ellie. Alternatively, you can contact your usual HGF representative or visit our Contact page to get in touch with your nearest HGF office.