On 14 May 2020, the Enlarged Board of Appeal of the European Patent Office declared that plants exclusively obtained by essentially biological processes are not patentable. Euroseeds welcomes this opinion, saying it finally clarifies the principal boundaries and limits of patentability for plant breeding.
"The opinion finally settles a question that has been discussed at length at various fora and has been subject to different interpretations throughout the past 5-10 years, a situation that created a constant legal uncertainty for breeders in their daily work", says Szonja Csörgő, Director Intellectual Property and Legal Affairs at Euroseeds.
"Breeders use each other’s varieties for further breeding as a routine part of their work since this is normally not only allowed but also encouraged by the breeder’s exemption under plant breeder’s rights law. Breeders also use essentially biological processes, i.e. crossing and selection as a routine part of their daily work and therefore it must be clear that the use of such essentially biological processes cannot be put at a halt by patent protection on products."
The practical effect of the opinion should be that patents on native traits are going to be less in number in the future and that breeders will not have to worry about infringing any patents while using crossing and selection processes only. "This is due to the approach that the EPO started to put in place when it started applying Rule 28(2) in the course of 2018 by imposing an obligation on patent applicants to include a disclaimer in the patent claims if according to the specifications a product may also be obtained by an essentially biological process, to disclaim such obtained products from the scope of protection", Szonja explains. "This will facilitate the daily work of breeders and will create legal certainty, an element which is very important to have in day-to-day work."
In its opinion, the Enlarged Board came back on a previous decision in case G 2/12 but now adopted a so-called “dynamic interpretation” of Article 53(b) of the European Patent Convention allowing it to take account of developments that took place since the adoption of that decision. In consequence of this new dynamic approach, the Enlarged Board now departs from its previous view that also products resulting from essentially biological processes (such as crossing and selection) could still be patentable.
“This is a true landmark decision for plant breeding. It finally provides the legal clarification on a matter that has been disputed for years and caused much uncertainty for breeders in their daily work”, states Garlich von Essen, Secretary General of Euroseeds. “We are glad that the Enlarged Board provided this clarification in such a timely manner – and we are hopeful that the application of Rule 28(2) will now resume very shortly.”
No retroactive effect
However, the Enlarged Board also concluded that in order to safeguard legal certainty, its new interpretation has no retroactive effect, thus only applies to applications and grants after 1 July 2017, the date of entry into force of Rule 28(2).
“As regards the non-retroactive application of the Rule, Euroseeds of course understands the need for legal certainty for patent applicants”, von Essen acknowledges. “We will however need to wait and see how national jurisdictions will now view the validity of those patents granted or applied for before the entry into force of Rule 28(2).