T 2796/18 - Rule 28(2) after all

Key points

•  The AC decided, under the former President, that Rule 28(2) was to apply also retroactively to applications already pending on 01.07.2017. The present decision concerns an appeal against the refusal of such an application on the sole ground that "the subject-matter of claim 1 was therefore excluded from patentability pursuant to Article 53(b) EPC and Rule 28(2) EPC"  because the claimed plants were exclusively obtained by means of an essentially biological process, which was not disputed.
• The Enlarged Board in G 3/19 did not opine on the validity of Rule 28(2) at all. Rather, the Enlarged Board changed their interpretation of Article 53(b) EPC. That new interpretation does not apply to applications already pending on 01.07.2017, the Enlarged Board held. This leaves open to some extent whether Rule 28(2) and Article 3 of that AC decision (OJ 2017 A56) is valid. 
• The Technical Board of Appeal in the present decision: "as the present application was filed before 1 July 2017, and is still pending (see section I), the new interpretation of Article 53(b) EPC adopted in opinion G 3/19 (supra), does not apply. Furthermore, Article 53(b) EPC, as interpreted by decisions G 2/12 and G 2/13 of the Enlarged Board of Appeal (supra), does not exclude the subject-matter of the main request from patentability. In view of the above considerations, the board concurs with the appellant that the subject-matter of the claims is not excluded from patentability pursuant to Article 53(b) EPC in conjunction with Rule 28(2) EPC." 

EPO T 2796/18 - 

Link to the decision after the jump, as well as an extract of the decision text.

https://www.epo.org/law-practice/case-law-appeals/recent/t182796eu1.html

Reasons for the Decision

1. The appeal complies with Articles 106 to 108 and Rule 99 EPC and is admissible.

Main request

Exceptions to patentability (Article 53(b) EPC)

2. The sole reason given by the examining division for rejecting the main request was that the claimed plants were exclusively obtained by means of an essentially biological process and that the subject-matter of claim 1 was therefore excluded from patentability pursuant to Article 53(b) EPC and Rule 28(2) EPC.

3. Article 53(b) EPC excludes from patentability "plant or animal varieties or essentially biological processes for the production of plants or animals" while

Rule 28(2) EPC, in force from 1 July 2017, stipulates 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.

4. The appellant did not dispute that the claimed plants were exclusively obtained by means of an essentially biological process but submitted that in accordance with opinion G 3/19 of 14 May 2020 (OJ EPO 2020, A119), the subject-matter of the claims was not excluded from patentability pursuant to Article 53(b) EPC.

5. The board considers that with opinion G 3/19 (supra), the legal situation underlying the decision under appeal has substantially changed (see in particular points 7. and 8. below).

6. In decisions G 2/12 and G 2/13 (see OJ EPO 2016, A27 and A28) the Enlarged Board of Appeal had held that the exception to patentability of essentially biological processes for the production of plants in

Article 53(b) EPC did not have a negative effect on the allowability of a product claim directed to plants or plant material such as a fruit or plant parts.

7. In opinion G 3/19 (supra) the Enlarged Board of Appeal abandoned the interpretation of Article 53(b) EPC given in decisions G 2/12 and G 2/13 (supra) and, in the light of Rule 28(2) EPC, held that the term "essentially biological processes for the production of plants or animals" in Article 53(b) EPC is to be understood and applied as extending to products exclusively obtained by means of an essentially biological process (see Reasons, point XXVI.8). The Enlarged Board of Appeal thus concluded that the exception to patentability of essentially biological processes for the production of plants or animals in Article 53(b) EPC has a negative effect on the allowability of product claims and product-by-process claims directed to plants, plant material or animals, if the claimed product is exclusively obtained by means of an essentially biological process (see Conclusion).

8. However, in order to ensure legal certainty and to protect the legitimate interests of patent proprietors and applicants, the Enlarged Board of Appeal considered it appropriate that the new interpretation of Article 53(b) EPC had no retroactive effect on European patents containing such claims which were granted before 1 July 2017, when Rule 28(2) EPC entered into force, or on pending European patent applications seeking protection for such claims which were filed before that date (see Reasons, point XXIX).

9. Accordingly, as the present application was filed before 1 July 2017, and is still pending (see section I), the new interpretation of Article 53(b) EPC adopted in opinion G 3/19 (supra), does not apply.

10. Furthermore, Article 53(b) EPC, as interpreted by decisions G 2/12 and G 2/13 of the Enlarged Board of Appeal (supra), does not exclude the subject-matter of the main request from patentability.

11. In view of the above considerations, the board concurs with the appellant that the subject-matter of the claims is not excluded from patentability pursuant to Article 53(b) EPC in conjunction with Rule 28(2) EPC.

12. The appeal is thus allowable.