T 1063/18 is out. A Peppery Decision!
February 5, 2019
The much awaited decision T 1063/18 by Technical Board of Appeal 3.3.04 in a five-member composition has been published today. The patent application under appeal related to new pepper plants and fruits with improved nutritional value, and the decision did indeed turn out to be quite peppery, at least in regard to the EPO Administrative Council's attempt to prohibit the patenting of plants by way of the addition of the "interpretative" Rule 28(2) EPC.
To begin with, the Board reminded itself of the existing case law of the Enlarged Board of Appeal (EBA) on Art. 53(b) EPC, which stipulates that European Patents are not to be granted for plant or animal varieties or essentially biological processes for the production of plants or animals. The question then put before the EBA was whether this exclusion also extends to plants or plant material or part of plants other than a plant variety. TBA 3.3.04 summarized the EBA's case law as follows:
Thus, in decisions G 2/12 and G 2/13, the EBA concludedthat the scope of application of the term "essentially
biological processes for the production of plants" in
Article 53(b) EPC is interpreted to the effect that
product inventions where the claimed subject-matter is
directed to plants or plant material such as a fruit or
plant parts other than a plant variety, as such, are
not excluded from being patented (see Reasons,
point IX.(1)).
These two decisions by the Enlarged Board have always been controversial, and it is probably fair to say that both the majority of the EU Parliament and the EU Commission did not like them too much. A Notice issued by the EU Commission on the patent protection of plants was quoted by the Board as stating the following:
"While these decisions of March 2015 [G 2/12 and G 2/13 ofthe EBA] are in line with the intentions of the drafters of the EPC, it
is questionable whether the same result would have been reached in the EU context" and furthermore that "When trying to assess the intentions of the EU legislator when adopting the Directive, the relevant preparatory work to be taken into consideration is not the work
which preceded the signature of the EPC in 1973, but that which relates to the adoption of the Directive."
and
"The Commission takes the view that the EU legislator’s intention when adopting Directive 98/44/EC, was to exclude from patentability products (plants/animals and plant/animal parts) thatare obtained by means of essentially biological processes."
Thus, there was a divergence between EPC law and the intentions of the EU legislator issuing the Biotech Directive, according to the Commission.
The EPO's Administrative Council tried to bridge this divergence by adding a new paragraph 2 to Rule 28, reading:
"(2) Under Article 53(b), European patents shall not begranted in respect of plants or animals exclusively
obtained by means of an essentially biological
process."
This addition was viewed by the Examining Division as a "clarification of the scope of Art. 53(b) EPC". But the Board of Appeal vehemently disagreed with this interpretation:
The board however cannot deduce from decisions G 2/12 andG 2/13 any other interpretation of Article 53(b) EPC
than that plants are not excluded from patentability,
even if they can only be obtained by an essentially
biological process. Since Rule 28(2) EPC excludes
plants or animals exclusively obtained by means of an
essentially biological process from patentability, its
meaning is in conflict with the meaning of
Article 53(b) EPC as interpreted by the EBA.
While the Board conceded that there are cases where possible contradictions between a rule of the implementing regulations and a provision of the EPC can be resolved by interpretation, it saw no way to do this here in view of the crystal clear case law of the Enlarged Board. The Board of Appeal was of the view that in the present case, Rule 28(2) EPC in fact reverses the meaning of Article 53(b) EPC as interpreted by the EBA. It also saw no reason to deviate from G 2/12 and G 2/13 and concluded that it must
apply decisions G 2/12 and G 2/13 unless it has reasons to refer the same question underlying these decisions for reconsideration by the EBA.
Such a reason might have been a later subsequent agreement between the parties in the sense of the Vienna Convention. However, in the Board's pretty outspoken view, the AC's addition of Rule 28(2) EPC was no such subsequent agreement. It would in fact represent an amendment of an Article of the Convention, for which the Administrative Council simply is not empowered in the light of Articles 33(1)(b) and 35(3) EPC.
Thus, to put it briefly and in my words, the Administrative Council acted ultra vires in adding Rule 28(2) EPC. For what it's worth, I have to confess that this is exactly the suspicion that I had from the first day when I saw the Administrative Council's decision introducing this rule. The proper way to implement such a substantive change of the European Patent Convention would have been by way of a diplomatic conference.
It will be interesting to see whether this laborious project will now be initiated. If so, there is certainly more on at least my personal wish list for legislative amendments, in particular the wish for a strong and truly independent judiciary within the European Patent Organisation that satisfies constitutional standards in regard to a proper separation of powers and, inter alia, protects members of the EPO from executive overreach.
Nonetheless, decision T 1063/18 shows that the Technical Boards of Appeal and the Enlarged Board are at least able to reach independent decisions when it comes to provisions of the EPC, even if these decisions will not always be popular or uncontroversial. In the end, though, the judiciary is bound to the law, and in this case Article 164(2) EPC clearly stipulates that the provisions of the Convention prevail.
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Concerned observer
Certainly a clear decision based upon robust logic ... which is more than can be said for the decision-making process that culminated in amended Rule 28(2) EPC. So what next? Will another (yet again ultra vires) general stay of prosecution be imposed, and the effects of T1063/18 confined solely to the case in which it was issued? Given the highly politicised nature of previous actions, nothing would surprise me now... except perhaps for common sense to prevail and for the Implementing Regulations to be reverted to their pre-1 July 2017 form (given that they have been determined to be incompatible with the Articles of the EPC). By the way, unless and until the CJEU provides a ruling on the interpretation of Article 4(1)(b) of the Biotech Directive, I do not see amendment of Article 53b EPC as being a viable way forward. This is because there is a decision of a (Dutch) national court that is in line with G2/12 and G2/13. As a consequence, it is FAR from certain that current Rule 28(2) represents the correct interpretation of Article 4(1)(b) of the Biotech Directive. Also, any "final instance" national court faced with the task of interpreting Article 4(1)(b) is now OBLIGED under EU law to refer questions to the CJEU before reaching any interpretation other than that outlined in the Dutch decision. Given that it is impossible to be certain how the CJEU will interpret Article 4(1)(b), it would be somewhat premature for the EPC Member States to prejudge that outcome by amending Article 53b EPC now. Moreover, it is perfectly possible that the CJEU will interpret Article 4(1)(b) in precisely the same manner as the Dutch court (and the Enlarged Board of Appeal)... meaning that any changes to Article 53b could result in the EPC being clearly out of line with EU law. In the light of the above, my view is that it would be MUCH more sensible for the EPO to continue interpreting Article 53b EPC in accordance with G2/12 and G2/13, and to only change course if and when the CJEU affords a different interpretation to Article 4(1)(b) of the Biotech Directive. However, I won't hold my breath waiting for the AC to suddenly start seeing sense!
Concerned observer
Whist I may not see amendment of Article 53b EPC being a sensible move at this stage, I do agree that it is high time for a (long-overdue) Diplomatic Conference to be convened in order to explore options for amending the EPC. May I suggest that, as a first order of business at any Diplomatic Conference, the Member States take action to ensure that the EPO accedes to the European Convention on Human Rights? There is no reason why this should not be possible. Firstly, the amendments to the ECHR that were proposed to enable the accession of the EU demonstrate that being an international organisation (as opposed to a State) need not prevent accession. Secondly, ALL of the EPC Contracting and Extension States are also Member States of the Council of Europe (and so have already acceded to the ECHR in their own right). In this context, a document providing answers to questions regarding the proposed accession of the EU makes very interesting reading (https://www.echr.coe.int/Documents/UE_FAQ_ENG.pdf). The following points particularly caught my eye. - Accession will CLOSE GAPS IN LEGAL PROTECTION by giving European citizens the SAME PROTECTION VIS-À-VIS ACTS OF THE UNION as they presently enjoy vis-à-vis all member States of the Union. - Accession will result in ALL EUROPEAN LEGAL SYSTEMS BEING SUBJECT TO THE SAME SUPERVISION in relation to the protection of human rights. Given the increasingly broad competences of the EU, it is ever more difficult to accept that it should be the only “legal space” left in Europe which is not subject in the same way as State parties to the Convention to external scrutiny by the European Court of Human Rights. - Accession will REASSURE CITIZENS that the EU, just like its member States, is not ‘above the law’ as far as human rights are concerned. This is a QUESTION OF CREDIBILITY, given that EU member States have transferred important competences to the Union and that ratification of the ECHR is a condition for EU membership. Who could possibly argue that the same points do not apply equally to the EPO?
MaxDrei
Concerned, when I read your second post, with its idea that the EPO should accede to the European Convention on Human Rights, I immediately thought of the human rights of certain individual EPO employees, and how they have been arrogantly abused, with total impunity and in such dirigiste style, by the immediate past-President. But let's not hold our breath. Can anybody imagine the AC finding the human decency to take such a step, especially in times like these, when it seems to all the world as if very few national governments any longer give a Flying Fl_lck for the precious Rule of Law.
Attentive Observer
It is remarkable to see how the BA defend their independence when it comes to the interpretation of the EPC, but they still have no independence when it comes to their budget and the possible conflict between the status of member of the BA and the general staff regulations at the EPO. I hope that the GFCC will look into this matter, not only when dealing with the complaint about the UPC, but when looking at the complaints against the independence of the BA which are much older. The constant fiddling with staff regulations so as to exclude a member of the BA from reoccupying his post tells a lot. The BA need thus not only their independence as far as the budget is concerned, but also as far as disciplinary sanctions are at stake. Can a judge whose re-appointment is subject to an assessment of performance, for which no criteria are public, be called independent? I fear not. For UPC judges, there are also no criteria known to decide on their re-appointment. As far as the independence of the UPC judges is concerned, I invite you to look at Art 10 of the Statute of the Court. According to this article, a judge can be removed from office by a decision of the Praesidium of the UPC, but I could not find any means of redress for a judge having been removed from Office under this article. Under independence of judges, I understand something different. I cannot see the bunch of people sitting in the AC doing anything in order for the EPO to accede to the ECHR. The latter might decide that the ILO-AT is not a jurisdiction that can qualify as a proper means of redress for EPO staff as it only looks whether the existing rules have been correctly applied, but will never say anything whether those rules are fair and give staff the required protection. Before calling a diplomatic conference, to look among other things at the second basket of measures, left aside in 2000, it is high time to call a conference of ministers in accordance with Art 4a EPC. As EPC 2000 went into force in 2007, two conferences are due since, but they never took place as it was the tail wagging the dog. This would also be a way for the new president to distance himself from his predecessor. Will he have the courage to do? I am not too sure seeing that in the last half year barely anything has changed at the EPO. Techrights: FINGERS OFF!!!!!