By: Jim Robertson
Patent Attorney/Partner - Life Sciences
IS NEW RULE 28(2) EPC UNENFORCEABLE? - PLANT PATENTS AT THE EPO AND EXCLUSIONS FROM PATENTABILITY
New Rule 28(2) EPC came into force on 1 July 2017, and states that:
"(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."
Classical plant breeding processes qualify as "essentially biological processes", as do processes involving the use of technical means which assist in the process. So this means that according to new Rule 28(2) EPC, plants obtained using classical plant breeding methods (even using modern technical means in the process) should not be patentable.
However, as detailed below, this new Rule 28(2) EPC directly conflicts with (indeed, it is explicitly intended to conflict with) Article 53(b) EPC, as interpreted by the Enlarged Board of Appeal in its decisions G2/12 and G2/13. As such, it should be unenforceable. Exactly whether that will happen, and how it will happen, is uncertain and so this introduces potential risk and cost for patent applicants and patentees.
The immediate question is therefore what can be done to mitigate any risks for existing patent applications and patents, and what can be done for future patent applications.
In this article, we review the background to the current situation, the legal issues, what will happen next, and look at strategic issues for patent applicants and patentees to take into consideration.
Although this article focuses on the patenting of plants, the same issues apply equally to the patenting of animals.
In its March 2015 decisions G2/123 and G2/134, the Enlarged Board of Appeal found that although essentially biological processes (i.e. methods) for the production of plants cannot be patented, novel and inventive plants or plant material other than a plant variety obtained by means of an essentially biological process can be patented.
These decisions caused some upheaval among various groups including plant breeders and at the European Parliament. Following a European Parliament Resolution, the European Commission issued a Commission Notice in which it took the view (note the word "view" here) that "the EU legislator's intention when adopting Directive 98/44/EC was to exclude from patentability products (plants/animals and plant/animal parts) that are obtained by means of essentially biological processes."
The Commission Notice states that "The Notice is intended to assist in the application of the Directive, and does not prejudge any future position of the Commission on the matter. Only the Court of Justice of the European Union is competent to interpret Union law.", i.e. recognises that it is absolutely non-binding and that it has no legislative or judicial effect.
Following the Commission Notice (and despite its non-binding nature), the EPO President then issued a notice stating that "all proceedings before EPO examining and opposition divisions in which the decision depends entirely on the patentability of a plant or animal obtained by an essentially biological process will be stayed ex officio."
On 29 June 2017 the EPO Administrative Council (most of whose members represent governments of European Union member states) adopted changes1 to the Implementing Regulations to the EPC (i.e. to the "Rules"). The changes came into effect on 1 July. New Rule 28(2) has been introduced which reads as follows (emphasis added):
"(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."
So this is explicitly intended to directly block the patenting of the products of plant breeding processes which were found to be patentable subject-matter in Enlarged Board of Appeal decisions G2/123 and G2/134.
This action by the representatives of European Union member states at the Administrative Council may itself have been illegal. However, resolving that may be a long and drawn out process - assuming that a legislative resolution is unlikely, it will ultimately require a referral to the CJEU.
On 1 July 2017 the EPO President lifted the stay on proceedings1 following the Administrative Council decision.
Legal issues - separation of power at the EPO and the impact of new Rule 28(2) EPC
The impact of new Rule 28(2) EPC hinges on the separation of power at the EPO (i.e. legislature, judiciary and executive).
The legislature is the contracting states to the EPC.
The judiciary is the Enlarged Board of Appeal. Its powers are set out in Article 22 EPC, which says that the Enlarged Board of Appeal is responsible for deciding on points of law referred to it by the Boards of Appeal. Article 112 EPC confirms that the decisions of the Enlarged Board of Appeal are binding, i.e. that the decisions of the Enlarged Board of Appeal are binding case law.
The executive includes the Administrative Council. Its powers are defined in Article 33 EPC. Amongst other things, it is able to amend the Implementing Regulations to the EPC.
Critically, Article 164(2) EPC says that "In case of conflict between the provisions of this Convention and those of the Implementing Regulations, the provisions of this Convention shall prevail."
Therefore, decisions of the Enlarged Board of Appeal are binding case law for the EPO, and where they relate to the meaning/interpretation of the EPC Articles (the Convention), they can only be overturned by amendment to the EPC itself (not the Implementing Regulations to the EPC, i.e. not the Rules).
So we now have a situation where new Rule 28(2) EPC has been brought into force at the EPO, but it should be unenforceable.
So what will happen next?
Since the stay of proceedings on all affected cases before opposition and examining divisions has been lifted1, this should now be a live issue in all of those cases. Indeed, it should be the only issue in all of those cases. Our expectation is that an interpretation of the law similar to the one given above will be submitted by the applicants/patentees in those cases. We expect that many applicants and patentees will be proactive in submitting their comments and observations (rather than waiting for the opposition / examining division to contact them).
Considering the clear conflict between new Rule 28(2) EPC and the interpretation of Article 53(b) EPC given by the Enlarged Board of Appeal, our hope is that the new Rule 28(2) will not be enforced. However, if it is then decisions will inevitably be appealed.
Strategy for patent applicants
So the take home message is that although at first sight new Rule 28(2) EPC) is a problem, in real terms it might be much less of an issue. In particular, it should still be possible to obtain parents at the EPO for plants and plant products obtained using essentially biological processes.
For new applications (particularly priority applications), it may be worth trying to side-step this whole issue by checking to see whether the process for the production of plants is really an “essentially biological process” or whether it falls outside of the term as interpreted by decisions G2/07 and G1/08.
For pending applications where proceedings were previously stayed, it may be appropriate to proactively submit comments/observations with regard to the validity/enforceability of new Rule 28(2) EPC.
For pending applications which are earlier in the patenting process at the EPO, it may be worth slowing prosecution until this issue has been finally resolved.
 OJ EPO 2017, A56 - Notice from the EPO dated 3 July 2017: https://www.epo.org/law-practice/legal-texts/official-journal/information-epo/archive/20170704.html
 Decisions G2/07 and G1/08 of the Enlarged Board of Appeal at Reasons 22.214.171.124 ("Conclusions") and ORDER http://www.epo.org/law-practice/case-law-appeals/recent/g070002ex1.html; http://www.epo.org/law-practice/case-law-appeals/recent/g080001ex1.html
 Resolution on patents and plant breeders’ rights 2015/2981(RSP): http://www.europarl.europa.eu/sides/getDoc.do?type=TA&language=EN&reference=P8-TA-2015-0473
 Commission Notice 2016/C 411/03: http://eur-lex.europa.eu/legal-content/EN/TXT/PDF/?uri=OJ:JOC_2016_411_R_0003&from=EN
 OJ EPO 2016, A104: https://www.epo.org/law-practice/legal-texts/official-journal/2016/12/a104.html
 G2/07 and G1/08 Reasons 126.96.36.199 Conclusions: "However, if a process of sexual crossing and selection includes within it an additional step of a technical nature, which step by itself introduces a trait into the genome or modifies a trait in the genome of the plant produced, so that the introduction or modification of that trait is not the result of the mixing of the genes of the plants chosen for sexual crossing, then that process leaves the realm of the plant breeding, which the legislator wanted to exclude from patentability. Therefore, such a process is not excluded from patentability under Article 53(b) EPC but qualifies as a potentially patentable technical teaching."
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AIPEX, the alliance of European IP professionals, wishes you a Merry Christmas and a prosperous and successful 2017. New Years marks a new beginning. New people to meet, new adventures to enjoy and new memories to create...
AIPEX is looking forward to assisting you in all your IP matters in Europe!
From 8 to 11 October 2016 the annual APAA conference took place, this year in Bali, Indonesia. Four of our best patent attorneys were present, on behalf of AIPEX. They very much enjoyed meeting you and look forward to seeing you again next year!
Our attorneys are always interested to make an appointment during the different conferences. Please feel free to contact us at email@example.com.
We are looking forward to seeing you soon!
In contrast to the practice of the European Patent Office the German Jurisdiction is much more flexible with respect to original disclosure of features.
The German Federal Court of Justice has decided in “Teilreflektierende Folie” (“partially reflecting foil”; X ZR 112/13) on the disclosure taken from drawings and on generalization of features. In proceedings before the EPO it is hardly possible to pick out single features from drawings, and a generalization of features is an absolute exception.
The following drawings have been the basis for amendments to the claims in the case ”partially reflecting foil”:
The application describes an arrangement for projecting images on a foil 20 by using a projector 12 and a mirror 18. The application does not explicitly disclose dimensions of the foil.
Based on the disclosure of the above drawings, only, the finding of the Federal Court of Justice was that it is admissible to add the feature to the claims that the foil is at least 3 by 4 m large.
Further, the original application disclosed that foil reflects 30 to 50% of the light, preferably 30%. According to the decision, it was admissible to significantly broaden this feature by defining that the foil is partially reflective as the values of 30% to 50% were only preferred examples for a skilled person when studying the application.
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The United Kingdom (UK) has voted to leave the European Union (EU) and the process to formally withdraw the UK’s membership of the EU (“Brexit”) will follow. This process is expected to take several years, during which time the UK will remain part of the EU. Nevertheless, as intellectual property (IP) law is one of the areas that is affected by the decision, we wish to take this opportunity to clarify how the decision affects the clients and associates of AIPEX.
AIPEX is an alliance of boutique intellectual property firms in Europe. It was founded in 2010, and is registered in Munich, Germany. AIPEX has partner members in key industrial territories of Europe: AOMB in The Netherlands, Germain & Maureau in France, Prinz & Partner in Germany, Wynne-Jones IP in the UK, Herrero & Asociados in Spain, SBGK in Hungary and AOMB Polska in Poland.
AIPEX attorneys work together as a team of over 200 professionals to combine national, regional and local knowledge as well as professional capacity and experience in all the necessary technical and legal specialities. Through AIPEX, the member firms are all able to provide an agile, co-ordinated and comprehensive response to any changes in the IP landscape in Europe, whether Brexit or beyond. Importantly, we can still file and prosecute “Pan-European” IP applications for European Patents, European Union Trade Marks and Registered Community Designs, as well as equivalent UK applications, and we can subsequently enforce the resulting rights in the relevant territories.
Owing to the timescales involved, there is no reason to be concerned about the immediate impact of the Brexit decision on intellectual property rights. However, it is sensible to think ahead:
IP IN EUROPE AFTER BREXIT
European patents are administered by the European Patent Office according to the European Patent Convention (EPC). Membership of the EPC is not dependent on membership of the EU - there are presently several member states of the EPC which are not members of the EU, including Norway and Switzerland – and European patents cover all member states to the EPC, which includes the UK and other EU states.
Accordingly, the UK’s relationship with the current European patent system is unaffected by the Brexit decision, and AIPEX services continue as before.
However, it is expected that the proposed so-called “unitary patent”, which has not yet come into force, will be affected by the Brexit decision. The unitary patent will be administered by the European Patent Office as part of the European patent application process. It is intended to provide applicants with the option of designating or protecting their inventions in all EU states in one hit, rather than the current process of requiring applicants to make a European patent effective in EU states, separately.
The birth of the unitary patent is dependent on the UK (in addition to other EU states) ratifying the Unitary Patent Agreement and, given that the UK is now no longer going to be a member of the EU, it is unclear when, or indeed if, the unitary patent will come into effect.
Assuming it does, however, the unitary patent will be available to all EU states that have ratified the Unitary Patent Agreement and, while it may no longer be possible to designate or cover the UK with the proposed unitary patent, it will still be possible for applicants to select a unitary patent, and separately cover the UK as part of the current European patent system. Clients of AIPEX member firms will have access to both. The selection of the unitary patent option and coverage in other countries such as the UK occurs at the end of the EP patent prosecution process. AIPEX firms will be able to handle all of these actions, as well as continuing to offer its high quality EP patent prosecution, opposition and appeal services.
It is expected that registered EU trade marks will (eventually) no-longer cover the UK. However, AIPEX members can continue to file and prosecute EU trade mark applications, and subsequently enforce EU trade mark registrations.
Consequently, all AIPEX firms will be pleased to represent clients in all EU trade mark proceedings, including EU trade mark opposition proceedings, as we have always done.
The uncertainty concerning EU trade marks relates to those EU registered trade marks which are presently in force. Unless the UK Government enacts suitable transitional legislation to recognize registered EU trade mark rights in the UK, it may be the case that existing registered EU trade marks will no longer provide trade mark protection in the UK. We think this is unlikely because it would result in a loss of rights to EU trade mark registrants, but will provide further information about this when it becomes available.
Similarly, while registered EU designs will (eventually) no-longer cover the UK, AIPEX members can also continue to file and prosecute registered EU design applications, and subsequently enforce EU design registrations.
Consequently, all AIPEX firms will be pleased to represent our clients in all EU design proceedings, as we have always done.
Again however, the uncertainty concerning registered EU designs relates to those EU registered designs that are presently in force. Unless the UK Government enacts suitable transitional legislation to recognize registered EU design rights in the UK, it may be the case that existing registered EU designs will no longer provide design protection in the UK. Once again, we think this is unlikely because of the consequences of loss of rights in relation to designs, which rely on novelty, and hence cannot be re-instated by later UK design applications.
In addition, EU design law also provides for unregistered EU design rights. This unregistered right provides design protection for a period of 3 years from when the design is made publically available within the territory of the EU. The protection afforded is different from that afforded by unregistered UK design rights, both substantively and in terms of duration. Accordingly, unless any transitional arrangements are put in place, it is likely that, for some designs, unregistered EU design protection will be lost as far as the UK is concerned. It is also likely that design publications in the UK will no longer trigger the existence of the EU right.
Community Plant Variety Rights
Similarly, while registered Community Plant Variety Rights will (eventually) no-longer cover the UK, AIPEX members can also continue to file and prosecute registered Community Plant Variety Rights, and subsequently enforce EU Community Plant Variety Right registrations.
Consequently, all AIPEX firms will be pleased to represent our clients in all Community Plant Variety Rights proceedings, as we have always done.
Again however, the uncertainty concerning registered Community Plant Variety Rights relates to those EU registered Community Plant Variety Rights that are presently in force. Unless the UK Government enacts suitable transitional legislation to recognize registered EU Community Plant Variety Rights in the UK, it may be the case that existing registered EU Community Plant Variety Rights will no longer provide protection in the UK. Once again, we think this is unlikely because it would result in a loss of Community Plant Variety Rights, but will provide further information about this when it becomes available.
For now, nothing has changed and it is business a usual.
Inevitably, there will be changes in a few years time, but AIPEX is committed to supporting our clients and our associates around the world with all their needs in the European Union and the UK, no matter what the changes in the European IP landscape.
Our position as Europe’s leading alliance of independent IP law firms – AIPEX – makes us uniquely placed among EU and UK patent and trade mark attorneys to do this.
Picture: https://flic.kr/p/Eg97FY by Jeff Djevdet (CC BY 2.0).
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