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Plants can be patentable after all

Classically bred plants should be held patentable once again. Last Wednesday the EPO Board of Appeal came to this remarkable decision. On July 1st last year the EPO – on explicit advice by the European member states – introduced guidelines that seemed to definitely exclude plants obtained by an essentially biological process from patentability. But it was not so definite after all, so it appeared this week.

The longtime debate on the patentability of plants last year culminated in the amendment of Rules 27 and 28 EPC by the Administrative Council. The amendment followed a Notice of the European Commission (EC) on the Biotech Directive. According to the EC, the directive should be interpreted in such a way that plants obtained by essentially biological processes are not to be held patentable.

Amended Rules conflict the Article

The amended Rules were considered by the Administrative Council as clarifying Article 53(b) EPC. The article excludes essentially biological processes from patentability but does not explicitly provide for an exclusion for the products thereof. But instead of clarifying, the Board of Appeal now has decided that the amended Rules are in conflict with the original Article.

The verdict of the Board was issued in the case of Syngenta Participations AG against the EPO. The Examining Division earlier rejected a Syngenta patent application for a new breed of pepper plants – a decision that was based on the amended Rules. To the big surprise of most stakeholders, Syngenta now appears to have successfully appealed the decision.

Article prevails over the Rules

The decision is greatly based upon Article 164(2) EPC, which stipulates that in cases like this, the Article prevails over the Rules. This would mean that plants that are produced according to essentially biological processes should be held patentable and no longer can be refused by the EPO. As a practical consequence, the amendment of Rules 27 and 28 EPC appears to be void.

This does not mean that the debate on patentability of plants is over. The legislators could for instance try to change Article 53(b) EPC itself. However, this can only be achieved through an Intergovernmental Conference, that has to be called into being by the European Council.

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