Key points
- "The referring Boards raised the question whether it was of relevance that the protection conferred by the product claim encompasses the generation of the claimed product by means of an essentially biological process for the production of plants excluded as such under Article 53(b) EPC [].
- The Enlarged Board: "the relevant point of law referred to the Enlarged Board is whether or not the "subject-matter" of a product claim or a product-by-process claim directed to a plant or plant material other than a plant variety is excluded from being patented under Article 53(b) EPC by virtue of the essentially biological nature of the process for making said plant or plant material. Thus, the aspect of the scope of protection conferred by such a claim has no direct impact on the point of law referred."
- "A distinction needs to be made between, on the one hand, the aspects of patentability and, on the other hand, the (protective) effects of European patents or patent applications. The EPC clearly provides for such a clear division, as the requirements for patentability are governed by Articles 52 to 57, 76, 83, 84 and 123 EPC whereas the extent of protection and the rights conferred by European patents or patent applications are specified in Articles 64(2) and 69 EPC in particular."
- "In this respect, reference is made to G 1/98 (supra, Order, point 3, and Reasons, point 4) where the Enlarged Board decided that Article 64(2) EPC is not to be taken into consideration in examining a claim to a process for the production of a plant variety (see also G 2/88, OJ EPO 1990, 93, Reasons, point 2.5)."
- See also points 4 and 5.1 of G2/88, of course.
- See also Guidelines H-V, 7.1, in connection with Article 123(3): "If a patent is so amended that a claim to a product (a physical entity) is replaced by a claim to the use of this product, the degree of protection is not extended, provided that the use claim in reality defines the use of a particular physical entity to achieve an effect and does not define such a use to produce a product" (because in the latter case, the amended claim could cause the downstream product to fall under the infringing acts of the patent by the effect of Art. 64(2) EPC, see G 2/88 point 5.1 of the reasons).
- "This conclusion applies mutatis mutandis to the examination of product and product-by-process claims directed to plants or plant products other than plant varieties."
- "As a consequence, whether a product claim [...] is patentable is to be examined irrespective of the extent of protection that is conferred by it after grant. Its allowability depends upon the fulfilment of the formal and substantive requirements of the Convention for these kinds of claim categories."
- Not sure whether it is helpful, but I visualize it as shown below:
EPO
The link to the decision can be found after the jump.
Thank you Peter.
ReplyDeleteG 2/13 thus provides a clear answer to question 1 of G 1/24 : Art 69 has no reason to apply to validity assessment by the EPO. It does not seem to have been cited though in the submissions of G 1/24.
A significant issue in the application of Art 69 for validity assessment is the interpretation of the term "description". It could be either the description of the patent as granted, or the description of the original application. The case law of the UPC is to consider the description of the original application, and to not consider amendments to the original description. This is consistent with the fact that the critical date for validity conditions is the filing date.
A general difficulty of G 2/13 is: what part of its reasoning is still good after G 3/19? But otherwise, yes that part of G 2/13 could be relevant.
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