Introduction
In decision T 1063/18, the Technical Board of Appeal 3.3.04 of the European Patent Office addressed the conflict between Rule 28(2) EPC and Article 53(b) EPC regarding the patentability of plants obtained through essentially biological processes. The decision overturned the refusal of the patent application by the Examining Division, which had based its decision on Rule 28(2) EPC, and remitted the case back for further prosecution. This case highlights the tensions between newly introduced rules and existing interpretations of the European Patent Convention (EPC).
Summary of the Invention
The invention concerns a pepper plant, specifically a cultivated blocky fruit-type pepper plant bearing extreme dark green color fruit at an immature harvestable stage. The plant is defined by two genetic determinants, represented by QTLs (Quantitative Trait Loci), that control the expression of the dark green color in the pepper fruit. These determinants are sourced from a specific Capsicum annuum line (deposited under Deposit Number NCIMB 41858) and are linked to specific marker loci. The extreme dark green color is also associated with high levels of chlorophyll A, chlorophyll B, lutein, and violaxanthin, providing improved nutritional value.
Summary of the Decision
The appeal was filed by Syngenta Participations AG against the decision of the Examining Division, which had refused the European patent application EP 12756468.0 based on the newly introduced Rule 28(2) EPC. This rule, which came into effect on 1 July 2017, stipulates that "European patents shall not be granted in respect of plants or animals exclusively obtained by means of an essentially biological process."
The applicant (Syngenta) argued that Rule 28(2) EPC is in direct conflict with Article 53(b) EPC, as interpreted by the Enlarged Board of Appeal in G 2/12 (Tomato II) and G 2/13 (Broccoli II). According to these decisions, plants obtained through essentially biological processes are not excluded from patentability. The applicant also requested an expedited process due to the legal uncertainties surrounding the case.
The Board of Appeal agreed with the applicant, concluding that Rule 28(2) EPC contradicts Article 53(b) EPC. The Board cited Article 164(2) EPC, which establishes that in cases of conflict between the EPC and the Implementing Regulations, the provisions of the Convention shall prevail. The Board set aside the decision of the Examining Division and remitted the case for further prosecution.
Lessons to be Learned
The decision emphasizes the need for a careful balance between legislative changes and established case law. Although the Administrative Council introduced Rule 28(2) EPC in an effort to align with EU legislation, the Board reaffirmed the authority of the Enlarged Board of Appeal's interpretation of the EPC. This decision serves as a reminder that newly introduced rules must not conflict with the EPC, and applicants should be aware of the legal hierarchies in patent law.
Contact
If you have any questions concerning intellectual property issuesor need assistance with patent applications, oppositions, or appeals, please do not hesitate to contact us at Novitech IP. Our team of experienced professionals is here to provide you with expert guidance and support. Reach out to us today to discuss how we can help protect your innovations and navigate the complexities of IP law.
To stay informed about the latest reviewsand updates in IP law, subscribe to our blog. Join our community and receive notifications whenever we publish new reviews and insights on important case law and developments in the field of intellectual property.
Legal Disclaimer
The information provided in this blog post is for generalinformational purposes only and does not constitute legal advice. The summary and analysis of the EPO case are based on publicly available information and are intended to offer insights into the decision and its implications. This content should not be used as a substitute for professional legal advice tailored to your specific circumstances. For advice related to any specific legal matters, you should consult a qualified attorney.