Can a plant rule supplant a plant decision?

In 2015 the Tomato-II (G 2/12) and Broccoli-II (G 2/13) cases reached decisions from the Enlarged Board of Appeal. These decisions held that:

“plant products such as fruits, seeds and parts of plants are patentable even if they are obtained through essentially biological breeding methods involving crossing and selection”.

In other words, individual plants could be patented, even if they were the result of traditional breeding. The decisions caused some commotion; yet the story did not end there.

On June 29 2017 the Administrative Council of the European Patent Office (EPO) amended the regulations pertaining to the patentability of plants. In the new rules, plants and animals exclusively obtained by an essentially biological breeding process are excluded from patentability. The amended rules ‒ Rules 27 and 28 ‒ applied with immediate effect on July 1 2017 and are as follows:

“Rule 27 ‒ Patentable biotechnological inventions
Biotechnological inventions shall also be patentable if they concern:
(a) [Unchanged]
(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) [Unchanged]

Rule 28 ‒ Exceptions to patentability
(1) [Unchanged]
(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.”

These rules originated as an implementation into the European Patent Convention of the EU Biotechnological Inventions Directive (98/44/EC). This directive was issued to harmonise European law in a field that was newly emerging at the time.

The decision to change the rules was made after an EPO proposal which was issued after a European Commission notice in November 2016. In this notice the present European Commission clarified that, in their view, it was never the intention of the legislators of the original directive to allow patents on biological processes or products obtained by such processes. The commission notice was triggered by Tomato-II and Broccoli-II.

It may come as a surprise that the European Union would have a say in the European Patent Convention, as many states that are a party to the convention are not EU member states and, conversely, some EU member states are not a party to the convention. The EPO's proposal, now adopted, was indubitably intended to promote the uniformity of European patent law; but will it?

Following the commission notice last November, proceedings in examination and opposition cases that could have been affected by this rule change were stayed. These cases will now be gradually resumed and must deal with the new rules. Therefore, the examining divisions and opposition divisions will probably reject any claims to plants or animals exclusively obtained by means of an essentially biological process.

However, decisions by these divisions can and probably will be appealed. The boards of appeal which issued the Broccoli-II and Tomato-II decisions are not formally bound by an amendment of the European Patent Convention Implementing Regulations if they perceive the rule to conflict with an article, because articles trump rules. Therefore, the boards can declare the rule invalid and non-enforceable under Article 164(2) of the European Patent Convention (which the enlarged board in G 2/07 did with Rule 26(5), which deals with a sort of definition of what essentially biological processes would be). This prerogative of the boards also applies when there is a conflict between an European Patent Convention rule and the interpretation of a European Patent Convention article, wherein the interpretation is established by a ruling of the Enlarged Board of Appeal (eg, T 315/03, point 5.7).

Even though the rules have changed, there is no guarantee that the ultimate outcomes of patentability will also change – such a guarantee could be delivered only by either a change in the articles of the European Patent Convention or the directive, or by new decisions from the Boards of Appeal. Therefore, even though the rule changes look pretty clear cut, they actually do not promote legal certainty in this area. The patentability of plants obtained by means of an essentially biological process is still an unsolved puzzle – it will be interesting to see how future board decisions turn out.