Report of the Committee on Biotechnological Inventions

A. De Clercq (BE), ChairA. De Clercq (BE), Chair

1. Patentability of plants and animals - G 3/19

Our committee reported on T 1063/18 in epi Information 1/2019 and 2/2019. This decision concerns the appeal by the applicant against the decision of the Examining Division to refuse European patent application no. 12 756 468.0 (publication no. EP 2 753 168 A1) for the sole reason that the claimed subject-matter was "found to be within the exception to patentability according to Article 53(b) EPC and Rule 28(2)" (here: plants exclusively obtained by means of an essentially biological process).

The Technical Board of Appeal (TBA) 3.3.04, in an enlarged composition consisting of three technically and two legally qualified members, held that Rule 28(2) EPC (see OJ 2017, A56) is in conflict with Article 53(b) EPC as interpreted by the Enlarged Board of Appeal (EBA) in decisions G 2/12 and G 2/13. In these decisions, the EBA had concluded that the exclusion of essentially biological processes for the production of plants in Article 53(b) EPC did not have a negative effect on the allowability of a product claim directed to plants or plant material.

The following points of law have been referred to the EBA by the President of the EPO in G3/19:

  1. 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?
  2. 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 epi Biotech Committee together with EPPC will prepare an amicus brief in name of epi for G 3/19. A short presentation was given and a discussion took place at the Council meeting to highlight the issues at stake in this referral. The deadline for submitting amicus briefs is October 1, 2019. An ad-hoc working group consisting of Ann De Clercq, Simon Wright, Chris Mercer and Heike Vogelsang-Wenke will be drafting the amicus brief.

The Biotech Committee will keep on following up this topic and provide its comments.

2. Overview of patentability of plants in the Member States

The Biotech Committee is following further national developments and has prepared an updated overview of the patentability of plants in the member states on basis of reactions of the members in each country and will follow up further. The information given in the referral document for G3/19 is in our opinion not completely accurate and in many countries the national law has not been amended and there are no immediate changes foreseen. An actual overview on national laws on Patentability of Plants can be found on the epi website:

3. Guidelines for Examination – biotech issues

The Biotech Committee is following up this topic as reported in epi Information 2/2019.

4. Upcoming meeting with DG1 Biotech Directors and committee meeting

On 17 October 2019 (am) the Biotech Committee will send a delegation to meet with the DG1 Biotech Directors in Munich. The topics of this meeting are currently being assembled. A liaison person from EPPC will be attending this meeting too.

On 16 October 2019 the Committee will hold its yearly meeting in Munich epi Secretariat and will also prepare then for the meeting with the EPO the day after.

5. Next meeting

The Biotech Committee will continue to deal with all questions relating to biotech and related life sciences inventions as well as topics referred to it by EPPC or other channels.