By Dr. Hadassa Waterman, Head of Biotech Department, Ehrlich & Fenster of Ehrlich Group.

The President of the EPO has referred questions to the Enlarged Board of Appeal on the controversial issue of patent-eligibility of plants obtained by essentially biological processes. The referral is now pending as case G3/19.  This means that as long as the issue is pending with the EBA, examination of applications related to plants generated by essentially biological processes can be delayed for at least 1-2 years but typically even more.

The referral is an outcome of the decision of the European Technical Board of Appeals in case No. T1063/18  overturning a decision made by the examining division of the EPO (European Patent Office) to refuse a European patent application related to pepper plants on grounds that the application could not be approved under Rule 28 (2) EPC. The decision to refuse registration was appealed by the applicant and the TBA declared the recently amended Rule 28(2) EPC is void. According to a recent press release by the EPO, “the Contracting States expressed their concerns with regard to the legal uncertainty caused by decision T 1063/18 and the case is now referred to the Enlarged Board of Appeal.  This legal uncertainty probably elicited the intervention of the president of the EPO as discussed above.

Rule 28(2) EPC was amended in 2017 to exclude plant products produced by essentially biological processes. This relates to Article 53(b) EPC, which excludes essentially biological processes for the production of plants or animals from patentability. The European Enlarged Board of Appeal interpreted Article 53(b) EPC in G 2/12 (also known as the “Tomato II” case, of the Volcani Institute, represented by our firm) and in G 2/13 (also known as the “Broccoli II” case) very narrowly, holding that Article 53(b) EPC should not prevent claims directed to plants or plant products produced by essentially biological processes.

The European Technical Board of Appeal’s recent decision in T1063/18 was a major turn of events for the international Agritech industry renewing the hope for IP protection to developers and investors in the field.

Now this issue was referred to the Enlarged Board of Appeal, leading the EPO to impose a formal stay of prosecution on applications with claims involving Article 53(b) EPC, plants generated by essentially biological process. We advise our clients to stay updated and react to developments on the issue on a case by case basis. Sometimes, not all claims are affected so they can be examined while holding others in abeyance or file a divisional application to later pursue them. The new availability for a stay in the proceedings is probably the most cost effective to manage applications related to Article 53(b) EPC.  Applicants should also consider filing amicus curiae briefs when the Enlarged Board of Appeal opens up that option.