IP Cases & Articles

G 3/19: plants produced by essentially biological processes not patentable

The Enlarged Board of Appeal has recently handed down its highly anticipated decision regarding the allowability of product and product-by-process claims in which the product is exclusively obtained by an essentially biological process.

The main judgment of the Enlarged Board of Appeal is as follows:

Taking into account developments after decisions G 2/12 and G 2/13 of the Enlarged Board of Appeal, the exception to patentability of essentially biological processes for the production of plants or animals in Article 53(b) EPC has a negative effect on the allowability of product claims and product-by-process claims directed to plants, plant material or animals, if the claimed product is exclusively obtained by means of an essentially biological process or if the claimed process features define an essentially biological process.

Whilst this is not a favourable outcome for applicants, particularly in the plant biotechnology space, there is some positive news as the Enlarged Board of Appeal also decided that:

This negative effective does not apply to European patents granted before 1 July 2017 and European patent applications which were filed before that date and are still pending.

For applications, the relevant date is their date of filing or, if priority is claimed, their priority date (see paragraph XXIX of the decision).

The reason for this distinction is that the Enlarged Board of Appeal’s current decision to change its previous interpretation of Article 53(b) EPC was based on new Rule 28(2) EPC, which was amended by the Administrative Council and came into force on this date. Rule 28(2) EPC: “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.”

As such, it appears that patents and applications with a priority date before 01 July 2017 will continue to be considered under the interpretation of Article 53(b) EPC provided by G 2/12 and G 2/13. As many will be aware, these previous decisions of the Enlarged Board of Appeal held that Article 53(b) EPC did not have a negative effect on the allowability of product claims or product-by-process claims directed to plants or plant material which are directly obtained and/or defined by an essentially biological process.

G 3/19 thus appears to result in a bifurcated system, whereby patent applications with a priority date before 01 July 2017 can include claims directed to a product or product-by-process which is directly obtained and/or defined by an essentially biological process; but applications with a priority date after 01 July 2017 cannot.

An important practice point will therefore be to ensure that the correct interpretation of Article 53(b) EPC is applied to applications and patents in proceedings before the EPO, based on the priority date of the case.

We will be providing more detailed comments on this decision shortly. As ever, we encourage you to contact your D Young & Co LLP representative should you require specific advice at this time.

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