On December 5, 2018, in an oral hearing on a patent on pepper plants, the European Patent Office declared the new rule 28(2) invalid, paving the way again for patents being granted on plants obtained by essentially biological processes.

The new Rule 28(2) was adopted by the Administrative Council of the EPO in June 2017 by an almost unanimous decision of its 38 contracting states, as a follow up to the clarifying notice issued by the European Commission in November 2016. In its notice, the Commission clarified that the intention of the EU legislator was to exclude plants and animals obtained by essentially biological processes from patentability.

In order to ensure harmonization between the two bodies of law (the EU Directive on one hand and the European Patent Convention (EPC) on the other hand), and to allow EU Member States to comply with both pieces of law in their national patent laws, the 38 contracting parties of the EPC decided to bring European patent practice in line with the interpretation provided by the European Commission. Accordingly, Rule 28(2) was adopted and has been applied by the EPO already in a number of cases, together with the introduction of a mandatory disclaimer in patent claims, which has been reflected lately also in the 2018 amendment of the EPO’s examination guidelines.

The European Seed Association (ESA) had advocated this change and welcomed the new Rule 28(2) and its practical implementation by the EPO. Rule 28(2) was a major step in clarifying that not only crossing and selection but also the resulting products cannot be subject to patent protection.

“The basics of plant breeding must remain free for further use by all breeders engaging in the development of new varieties of plants. The new Rule 28(2) provided important legal certainty and reassurance to plant breeders on this basic principle,” said Garlich von Essen, ESA Secretary General.

”We regret that the Technical Board of the EPO decided to overturn the situation, creating new legal uncertainty. This disregards the intention of the EU legislator and the clear political direction that the contracting parties of the EPC decided to follow as well as the effects on the plant breeding sector. The issue must now be clarified as quickly as possible; as the administrative decision of the EPO is apparently insufficient to resolve the matter, other solutions now will need to be considered,” continued von Essen.

The non-patentability of products obtained by essentially biological processes remains a major cornerstone of ESA’s position on intellectual property protection and ESA will continue its advocacy to achieve respective legal certainty as soon as possible.

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European Seed Association