G 3/19 - Referral - Pepper

Referred point of law:
Under Article 112(1)(b) EPC the President of the European Patent Office refers the following points of law to the Enlarged Board of Appeal:

1. Having regard to Article 164(2) EPC, can the meaning and scope of Article 53 EPC be clarified in the Implementing Regulations to the EPC without this clarification being a priori limited by the interpretation of said Article given in an earlier decision of the Boards of Appeal or the Enlarged Board of Appeal?

2. If the answer to question 1 is yes, is the exclusion from patentability of plants and animals exclusively obtained by means of an essentially biological process pursuant to Rule 28(2) EPC in conformity with Article 53(b) EPC which neither explicitly excludes nor explicitly allows said subject-matter?

Analysis admissibility

• The President submits that there are "different decisions" for question 1. In particular, T1063/18 would conflict with earlier decisions which would "acknowledge" that the AC is competent to give an authentic interpretation of an Article of the EPC in the Implementing Regulations "without being limited in this regard by an interpretation of the Article set forth in earlier case law". These decisions are T315/03 (r. 7.3) T272/95 (r.4), G2/07 (r.2.4). In para. 49 ff. the President further points to G2/06 (r.13), J 20/84 r.5 (about filing with fax) and T991/04 r.6). I note that none of these decisions appears to deal specifically with the issue of whether a decision of the Enlard Board has a limiting effect on subsequent changes of the Rules. 
• The President submits that "On this basis question 2 is also admissible, since it is directly related to the different application of Article 164(2) EPC as exemplified in the specific case of Rule 28(2) EPC. In the alternative, question 2 should be considered admissible based on an analogous application of Article 112(1)(b) EPC". The President submits that application of Article 112(1)(b) by analogy is not excluded and that "[t]he effect of decision T 1063/18 is comparable to the situation where two Boards have given different decisions".
• The President also submits as an auxiliary reason for admissibility of Question 2 that "question 1 is clearly admissible. Question 2 should be considered admissible too on the same basis." 
• The President curiously enough cites G 2301/16 as support for the sentence that “the Enlarged Board of Appeal is ‘the highest judicial authority of the EPO’.” (para. 31 of the referral, footnote 29).  

EPO G 3/19 - G0003/19 - G 0003/19

https://www.epo.org/law-practice/case-law-appeals/eba/pending.html 


link to PDF: http://documents.epo.org/projects/babylon/eponet.nsf/0/7C42BAE688EAD1F1C12583D70036374E/$File/Referral%20T%201063%2018_for%20President_2%20April_edited_clean%20approved.hyperlinks.ohnebeck%20(2).pdf 



A. Admissibility of the referral


[...]
I. Different decisions of two Boards of Appeal
4. Decision T 1063/18 differs from earlier case law with regard to the way in which an EPC Rule which clarifies the meaning and scope of Article 53 EPC is assessed under Article 164(2) EPC.
8. This approach differs from other decisions, namely the case law relating to the implementation of Directive 98/44/EC of 6 July 1998 on the legal protection of biotechnological inventions (hereafter referred to as "EU Biotechnology Directive") into the EPC.


9. In decision T 315/03 (relating to what has become Rule 28(1)(d) EPC) the Board fully acknowledged the Administrative Council’s competence to interpret Article 53(a) EPC by amendment to the Implementing Regulations based on Article 33(1)(c) EPC without being limited in this regard by an interpretation of the Article set forth in earlier case law.

[...]
11. In decision T 272/95 (relating to what has become Rule 29(1) EPC) the Board, too, fully acknowledged the Administrative Council’s competence to give "a more detailed interpretation of the meaning of Article 53 EPC".4

12. In decision G 2/077 the Enlarged Board of Appeal also followed an approach under Article 164(2) EPC which differs from the one underlying decision T 1063/18 as well as decision T 39/93 on which the Technical Board of Appeal relied for its conclusion. Namely, the Enlarged Board of Appeal did not endorse the reasoning underlying decision T 39/93 that under Article 164(2) EPC a previous interpretation of Article 53 EPC by the Enlarged Board of Appeal would a priori preclude its clarification by means of a newly drafted Rule of the Implementing Regulations.


13. The Enlarged Board held in point 2.4 of the Reasons for the Decision that: "[b]ased on the assumptions that the approach to the interpretation of Article 53(b) EPC adopted by the boards of appeal prior to the introduction of Rule 23b(5) EPC 1973 reflected the true meaning of that Article, and that Rule 23b(5) EPC 1973 was aimed at a very narrow construction of Article 53(b) EPC 1973, and one which was hardly to be reconciled with the previous interpretation of that Article, the referring Board considers that Rule 23b(5) EPC 1973 is in conflict with Article 53(b) EPC 1973, contrary to Article 164(2) EPC.
Reference is made by the referring Board to decision T 39/93 (OJ EPO 1997, 134, point 2.3 of the Reasons), in which it was held that, in view of Article 164(2) EPC, the meaning of an Article of the EPC on its true interpretation as established - in that case - by a ruling of the Enlarged Board of Appeal cannot be overturned by a newly drafted rule of the Implementing Regulations. As will be set out below, this reasoning is based on assumptions which are not endorsed by the Enlarged Board, so that a problem of conflict between Rule 26(5) EPC and Article 53(b) EPC in the sense described by the referring Board does not arise. (emphasis added)." [emphasis in referral document]