The Enlarged Board of Appeal of the European Patent Office issued opinion G 3/19 (Pepper) on 14.05.20 and concluded that plants and animals exclusively obtained by essentially biological processes are not patentable.
The key concepts of opinion G 3/19
The Enlarged Board of Appeal of the European Patent Office adopted a dynamic interpretation of the exception to patentability under Article 53(b) of the European Patent Convention (EPC) and held that the non-patentability of essentially biological processes for the production of plants or animals also extends to plant or animal products that are exclusively obtained by means of an essentially biological process.
The Enlarged Board of Appeal is the highest judicial authority under the EPC, which provides for an autonomous legal system that is separate from the European Union. The Enlarged Board’s main task is to ensure the uniform application of the EPC.
Under Article 53(b) EPC, European patents shall not be granted in respect of plant or animal varieties or essentially biological processes for the production of plants or animals. Rule 28(2) EPC provides that under Article 53(b) EPC, European patents shall not be granted in respect of plants or animals exclusively obtained by means of an essentially biological process.
Rule 28(2) EPC was introduced by the decision of the Administrative Council of the European Patent Organisation and came into force on 1 July 2017.
In 2015, the Enlarged Board had concluded in its decisions G 2/12 and G 2/13 within the then applicable legal framework, i.e. before the introduction of Rule 28(2) EPC, that the non‑patentability of essentially biological processes for the production of plants or animals under Article 53(b) EPC did not extend to products that are exclusively obtained by means of an essentially biological process.
In 2018, a Technical Board of Appeal held in decision T 1063/18 that new Rule 28(2) EPC had no impact on the interpretation of Article 53(b) EPC, and followed the Enlarged Board’s earlier decisions G 2/12 and G 2/13.
In 2019, the President of the European Patent Office referred a point of law to the Enlarged Board of Appeal under Article 112(1)(b) EPC concerning the interpretation of Article 53(b) EPC in view of legal and other developments occurring after decisions G 2/12 and G 2/13, and in particular in view of new Rule 28(2) EPC.
In its opinion issued today, the Enlarged Board of Appeal held the referral by the President of the European Patent Office to be admissible within the terms of a re‑phrased question. On the merits of the referral, the Enlarged Board endorsed its earlier findings on the scope of Article 53(b) EPC, which were based on the classical (i.e. the grammatical, systematic, teleological and historical) methods of interpretation. However, the Enlarged Board found that a particular interpretation which has been given to a legal provision can never be taken as carved in stone, because the meaning of the provision may change or evolve over time. This meant that decisions G 2/12 and G 2/13 did not settle the meaning of Article 53(b) EPC once and for all.
Taking account of the Administrative Council’s decision to introduce Rule 28(2) EPC, the preparatory work on this provision and the circumstances of its adoption, as well as legislative developments in the EPC contracting states, the Enlarged Board concluded that new Rule 28(2) EPC allowed and indeed called for a dynamic interpretation of Article 53(b) EPC.
In adopting this dynamic interpretation, the Enlarged Board abandoned its earlier interpretation of Article 53(b) EPC in decisions G 2/12 and G 2/13. It held that, after the introduction of new Rule 28(2) EPC, Article 53(b) EPC was to be interpreted to exclude from patentability 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.
In order to ensure legal certainty and to protect the legitimate interests of patent proprietors and applicants, the Enlarged Board ruled that the new interpretation of Article 53(b) EPC given in G 3/19 had no retroactive effect on European patents containing such claims which were granted before 1 July 2017, or on pending European patent applications seeking protection for such claims which were filed before that date.
Source: www.epo.orgRead More
On April 26, 2018, the United Kingdom announced that it deposited the instruments of ratification for the Agreement relating to the Unified Patent Court (UPCA). This now brings the total number of ratifications to sixteen in Europe.
The ratification by the UK makes a decisive step closer to achieving the entry Unitary Patent into force. This new European patent will support innovation in Europe with simplified administration, reduced costs and greater legal certainty.
For the Unitary Patent to enter into force, the UPC Agreement needs to be ratified by thirteen of the 26 participating EU Member States (all EU countries except Croatia and Spain), including France, Germany and the UK as the countries with the largest numbers of European patents in force. While the necessary number of ratifications had already been achieved in 2017, the ratification of Germany is the only one from the big countries still outstanding.
There is a pending complaint against the UPC Agreement at the Federal Constitutional Court of Germany. The German constitutional complaint against ratification of the Unified Patent Court Agreement is on the list of cases to be decided by the “Bundesverfassungsgericht”, the Federal Constitutional Court of Germany this year. It is very likely that Germany will ratify the UPC agreement this year.
The UPC is a dedicated court for patents, hearing cases of validity and infringement – and later also European patents – granted by the EPO. The Court forms part of the Unitary Patent Package and is based on an international treaty, which needs to be ratified in parliament by the EU Member States, while the patent itself is the result of two EU regulations adopted in 2012.
A detailed explanation of the Unitary Patent and the Unified Patent Court is provided below.
Thereby, nothing will change in the pre-grant phase and the same high standards of quality search and examination will apply. After a European patent is granted, the patent proprietor will be able to request unitary effect, thereby getting a Unitary Patent, which provides uniform patent protection in up to 26 EU Member States.
By submitting a single request to the EPO, via a Unitary Patent, it will make it possible to get patent protection in up to 26 EU Member States. The 26 member states will build on European patents granted by the European Patent Office (EPO) under the rules of the European Patent Convention (EPC).
Today, via a national patent or a European patent an inventor can protect an invention in Europe.The EPO examines applications for European patents centrally, saving inventors the costs of parallel applications, while ensuring a high quality of granted patents.
However, granted European patents must be validated and maintained individually in each member country. Currently, this process can be a complex and potentially very costly as validation requirements differ between countries. This leads to high direct and indirect costs, including translation costs, validation fees and associated representation and maintenance costs. These costs can be considerable depending on the number of countries where the patent proprietor wishes to validate.
Here are some of the benefits which will save applicants costs, time and minimize the administrative workload .
- The EPO acts as a one-stop-shop, allowing for a simple registration of a Unitary Patent.
- No fees are due for the filing, examination of the request for unitary effect or for registration.
- No post-grant translations will be required after a six-year transitional period (during this time, informational purposes only will a translation will be required and will not have any legal effect).
- A new compensation scheme will cover costs related to the translation of the patent application if it was filed in an official EU language other than English, French or German for EU-based SMEs, natural persons, non-profit organizations, universities and public research organizations.
- Unitary Patents will also not be subject to the currently fragmented renewal fee system: there will be only one procedure, currency and deadline and no obligation to use a representative.
- The renewal fees have been set at a very competitive level and are particularly attractive for the first ten years (average protection for a European patent). The more countries in which the European patent will be validated, the greater the savings also on indirect costs for applicants.
- All post-grant administration will centrally be handled by the EPO.
- The online register, notably for licenses and transfers will include legal status information relating to Unitary Patents.
- Unitary Patents will confer truly uniform protection thanks to all matters harmonized previously in the Agreement on a Unified Patent Court.
Unified Patent Court
An international court set up by 25 participating Member States (all EU countries, except for Croatia, Poland and Spain to deal with the infringement and validity of both Unitary Patents and European patents. Its rulings will apply in all Member States that have ratified the Agreement on a Unified Patent Court.
The UPC will:
- establish an effective forum for enforcing and challenging patents in Europe;
- end the need for litigation in different countries;
- enhance legal certainty through harmonized case law in the area of patent infringement and validity;
- provide simpler, quicker and more efficient judicial procedures;
- harmonize substantive patent law relating to the scope and limitations of the rights conferred as well as the remedies in cases of infringement.
Currently, national courts and authorities decide on the infringement and validity of European patents. This can lead to difficulties when a patent proprietor wishes to enforce a European patent in several countries or when a third party seeks the revocation of a European patent. Forum shopping is often inevitable, as parties seek to take advantage of differences between national courts and their procedures. Litigation in multiple countries is expensive and there is a risk of diverging decisions and a lack of legal certainty.
The UPC Agreement addresses these shortcomings by creating a specialized patent court with exclusive jurisdiction for litigation relating to Unitary patents and European patents and harmonizing the scope and limitations of the rights conferred by a patent, and remedies available beyond EU Directive 2004/48/EC (Enforcement Directive).
A Court of First Instance, a Court of Appeal and a Registry will comprise the UPC.
The Court of First Instance will be composed of a central division (seat in Paris, sections in London and Munich) and several local and regional divisions. The Court of Appeal will be located in Luxembourg.
For all parties involved in European patent litigation, the UPC will provide a better framework. Costs will be reduced and different decisions from national courts on infringement and validity will cease. A more efficient and balanced patent litigation system will emerge over time. (The benefits for patent proprietors and third parties are:
- the UPC will offer better valid patent enforcement, with Europe-wide effects of decisions, injunctions and damages for patent proprietors;
- the UPC will provide a central revocation action, separate from the EPO’s opposition procedure, at any time during the life of the patent for third parties and the public.