T 2049/23 - Watermelons and discoveries

Key points

• The opponents include "Keine Patente auf Saatgut! e.V.". The patent concerns a conventionally-bred watermelon.
• The opponent argued that "the transitional period created by opinion G 3/19 should not be taken into account and that it did not matter whether the patent applications were filed before or after July 2017."
• The present Board: "in order to ensure legal certainty and to protect the legitimate interests of patent proprietors and applicants, the Enlarged Board of Appeal [in G 3/19] further decided that "the new interpretation of Article 53(b) EPC given in this opinion has no retroactive effect on European patents containing such claims which were granted before 1 July 2017, when Rule 28(2) EPC entered into force"
• It seems that the opponent did not invoke Article of the AC decision that inserted Rule 28(2): "This decision shall enter into force on 1 July 2017. Rules 27 and 28 EPC as amended by Articles 1 and 2 of this decision shall apply to European patent applications filed on or after this date, as well as to European patent applications and European patents pending at that time" (OJ EPO 2017, A56). This is a pity, because the EBA did not expressly set aside that part of the AC's decision.
• On inventive step:  the appellants  [opponents] submit that the claimed watermelon plants having a bush growth habit constitute a discovery rather than an invention. The board understands this as an objection under Article 100(a) and Article 52(2)(a) EPC to the effect that the claimed subject-matter is not a patentable invention but a discovery.'" 
•  "According to the case law of the Boards, a substance which occurs in nature can be considered an invention when it is shown to give rise to a technical effect. This principle is reflected in Rule 27(a) EPC, according to which biotechnological inventions are patentable if they concern biological material which is isolated from its natural environment or produced by means of a technical process, even if it previously occurred in nature. 
• For example, if a microorganism is found in nature and shown to produce an antibiotic, the microorganism itself may also be patentable as one aspect of the invention. 
• Similarly, a gene which is discovered to exist in nature may be patentable if a technical effect is revealed, e.g. its use in making a certain polypeptide or in gene therapy
•  "The board considers that the plants (and plant tissues) of claims 1 to 16 do not constitute a discovery." 
• "While the "home-garden diploid watermelon [with] an interesting growth type" mentioned in paragraph [0119] of the patent [] could be argued to be a discovery, it is not part of the claimed subject-matter. Instead, the mutated allele present in said plant has been transferred to other plants (i.e. those producing seedless fruit) and these have been shown to produce a technical effect: as set out in paragraph [0001] of the patent "this plant can be grown at a higher density in the field compared to traditional non-bush triploid watermelon hybrids, leading to a higher fruit yield per hectare compared to triploid hybrids with normal growth habit (having an average longest vine length of above 200 or above 300 cm)"."
• The appeal is dismissed. 

EPO 

The link to the decision can be found after the jump.

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.

T 0420/19 - Art.53(b) and (not) Rule 28(2)

 Key points

• In this opposition appeal, claim 6 is directed to “ A barley plant, or part thereof, wherein the barley plant carries a mutation in the gene encoding methionine-S-methyltransferase(MMT) that causes a total loss of MMT function".” The opponent is a public interest group.
• The opponent submitted that “the claimed barley plants fell under the exception to patentability defined in Article 53(b) EPC because they were the direct product of an essentially biological process.” The filing date is in 2009.
• The Board notes that in G 3/19, the EBA further decided that "the new interpretation of Article 53(b) EPC given in this opinion has 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".
• The Board, after some further remarks on this legal issue, notes that: “Since the patent was granted before 1 July 2017 (see section III above), the subject-matter of claim 6 (and dependent claims 7 to 9 and 16) is not excepted from patentability in view of Article 53(b) EPC as interpreted by the decisions of the EBA G 2/12 and G 3/12.”
•  As a comment, the Board does not comment on Rule 28(2) as the legal basis for the revocation. The Administrative Council decided that Rule 28(2) EPC “shall apply to European patent applications filed on or after this date [01.07.2017], as well as to European patent applications and European patents pending at that time”, Article 3 of the Decision  of the Administrative Council 29.06.2017, OJ 2017 A56.
•  The Enlarged Board in G 3/19 has not said expressly that Rule 28(2) is invalid, neither that said Article 3 of the AC Decision is invalid. However, from the present decision, it seems clear that at least said Article 3 is vacated. The present decision does not discuss Rule 28(2) as such. 
•  See also here.
•    Further on sufficiency: “The opposition division considered that the only methods given in the patent to obtain the claimed mutants was mutagenesis and subsequent screening, thus relying on identification of a chance event. In view of the number of plants that would have to be screened to arrive at the claimed invention, it was undue burden to identify further mutants in addition to those deposited pursuant to Rule 31(1)(a) EPC, been identified by this method”
•  “The board considers that the mere fact that mutagenesis is a random process and that large numbers of mutant barley plants might have to be screened does not, in the present case, represent an undue burden the skilled person. The board therefore does not agree with the opposition division that the fact that mutagenesis, due to reliance on mutations at "random" locations in the genome, necessarily represents an undue burden for the skilled person. …  In the present case, the invention is reproducible without undue burden because there is evidence that the chance event can be identified frequently enough to guarantee success.”
• As to inventive step: “ In the absence of a readily available library of insertional mutants of barley it would have been necessary to use a screening procedure for detecting mutant barley grains lacking MMT activity. No such assay is disclosed in either document D1 or D2. The need to develop such an assay would have dissuaded the skilled person from arbitrarily choosing barley when attempting to solve the technical problem.”

T 1854/19 - Implicitly overruling the Administrative Council

 Key points

• This is a follow-up case to G 3/19 (Pepper). In pepper, the Enlarged Board gave a new interpretation of Article 53(b) EPC which corresponds to Rule 28(2) EPC in excluding ‘essentially biological plants’ from patentability (but in fact appears to exclude more from patentability than Rule 28(2) EPC). The Enlarged Board said in G 3/19 that “this negative effect does not apply to European patents granted before 1 July 2017 and European patent applications which were filed before that date and are still pending”; the ‘negative effect’ is that of Article 53(b) EPC for the types of plant-related subject-matter recited in G 3/19 hn.1. 
• However, the Administrative Council decided that Rule 28(2) EPC “shall apply to European patent applications filed on or after this date [01.07.2017], as well as to European patent applications and European patents pending at that time”, Article 3 of the Decision Administrative Council 29.06.20147 OJ 2017 A56.
• The Enlarged Board in G 3/19 has not said (or at least not explicitly) that Rule 28(2) is invalid, neither that said Article 3 of the AC Decision is invalid.
• Therefore, G3/19 strictly speaking leaves open the question of whether Rule 28(2) is to be applied to applications filed before 01.07.2020
• The present Board: “In view of the provisions set out by the Enlarged Board of Appeal for European patent applications pending before 1 July 2017, the new interpretation of Article 53(b) EPC - announced in opinion G 3/19 [...]- has no retroactive negative effect on the subject-matter of the main request (see opinion G 3/19, points XXVIII and XXIX). This implies that the opinion does not acknowledge the retroactive effect, as provided for in Article 3 of the Decision of the Administrative Council of 29 June 2017 [OJ 2017 A56] that introduced Rule 28(2) EPC.”
• This Board finds that “the subject-matter of the set of claims of the main request is not excluded from patentability” because of the filing date of the present application and because " Article 53(b) EPC, as interpreted by decisions G 2/12 and G 2/13 is applicable to the present application”. Strictly speaking, the present Board still does not say that Rule 28(2) is not applicable to this application but this is unambiguously implied by finding that the subject-matter is not excluded from patentability. 
• So this Board finds that the Enlarged Board implicitly overruled the Administrative Council in G3/19.
• I note that said Article 3 of said Decision of the AC is not strictly speaking a provision of the Implementing Regulation, so it is not clear if Article 164(2) applies. 

EPO T 1854/19 - - link

Reasons for the Decision

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

Main request - claims 1 to 14

Exceptions to patentability (Article 53(b) EPC)

2. In view of the provisions set out by the Enlarged Board of Appeal for European patent applications pending before 1 July 2017, the new interpretation of Article 53(b) EPC - announced in opinion G 3/19 of 14 May 2020 and being consequential to the introduction of Rule 28(2) EPC on 1 July 2017 - has no retroactive negative effect on the subject-matter of the main request (see opinion G 3/19, points XXVIII and XXIX). This implies that the opinion does not acknowledge the retroactive effect, as provided for in Article 3 of the Decision of the Administrative Council of 29 June 2017 that introduced Rule 28(2) EPC.

3. Thus, Article 53(b) EPC, as interpreted by decisions G 2/12 and G 2/13 (OJ EPO, 2016, A27 and A28) is applicable to the present application and the subject-matter of the set of claims of the main request is not excluded from patentability.

4. The board thus considers the appeal allowable.