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It is over a year since we explained on this blog the controversy of article 53(b) of the European Patent Convention (“EPC”) on the patentability of animals and plants obtained from essentially biological processes (crossbreeding and selection).

Although the European Patent Office (“EPO”) initially upheld the patentability of plants obtained in such a way (not from the processes; decisions Tomatoes II G0002/12, and Broccoli II G0002/13), contrary to the position taken by the European Commission that that was contrary to article 4 of Directive 98/44/EC on biotechnological inventions, the tide seemed to have turned when in July 2017, the EPO changed rules 27 and 28 of the implementing regulations of Part II ECP, precisely to exclude animals and plants obtained from those processes from patentability. That seemed to put the matter to rest.

However, the dispute was reopened last December. On December 5, the Enlarged Board of Appeals issued its decision in case T 1063/18 (on the appeal against the rejection of Syngenta’s patent application), indicating that the rules (particularly Rule 28), amended in July 2017, contradicted article 53(b) of the convention interpreted by the Tomatoes II and Broccoli II decisions, and that the interpretation of the article must prevail, thus rendering the amendment to the rules null. Therefore, the EPO’s position is once again that plants obtained from essentially biological processes need to be held patentable.

As such, it seems that unless a change to the convention prevents it from doing so, the EPO will continue to grant patents for these plants, although their effectiveness in the EU is questionable if their validity is put to the test before the national courts of EU Member States, and they side with the commission that the patents breach article 4 of Directive 98/44/EC on biotechnological inventions.

In any case, the EPO’s changeable position casts more legal uncertainty in this area, with the resulting risks that entails.

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jorge.llevat@cuatrecasas.com

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