In the never-ending story on the patentability of plants in Europe, the EPO Board of Appeal decided on December 5th 2018, contrary to previous amendments to Rule 27 and 28 of the EPC, that plants produced by means of essentially biological processes need to be held patentable after all.
Amended Rules 27 and 28 EPC were a response to the view of the European Commission and served to clarify the interpretation of Article 53(b) EPC and were deemed necessary to align EPO's law and practice with the interpretation of the Biotech Directive.
The present case however, dealt with a patent application, EP2753168, entitled “New pepper plants and fruits with improved nutritional value”, filed in the name of Syngenta Participations AG. Syngenta appealed the decision of the Examining Division to reject the application in view of amended Rules 27 and 28 EPC (T1063/18). During the Oral Proceedings which were held on 5 December 2018, the Board of Appeal decided that amended Rules 27 and 28 EPC are in conflict with Article 53(b) EPC. The correct interpretation of Art. 53(b) has been provided by the Enlarged Boards of Appeal in the cases G2/07 and G1/08 and the corresponding cases G2/12 and G2/13 (tomato and broccoli cases). Article 164(2) EPC stipulates that in such cases, the Articles shall prevail over the Rules.
This would mean that the amendment of Rules 27 and 28 EPC as introduced in 2017 is thus meaningless and that plants produced by means of essentially biological processes are patentable and can no longer be refused on the basis of Rule 28(2) EPC.
It remains to be seen what the next step of the legislator will be and whether or not a change of Art. 53(b) EPC is looming. In the meantime, the agricultural sector is yet again up for a period of legal uncertainty when it comes to plant patents in Europe.