Exceptions to patentability – Plant products produced by essentially biological processes – Referral G 3/19

The President of the EPO has referred 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?

When the President of the EPO announced its intention to refer a point of law to the Enlarged Board of Appeal (EBA) following decision T 1063/18 on the patentability of products of essentially biological processes, observers speculated how the requirement of Article 112 (1) (b) EPC could be fulfilled that “two Boards of Appeal have given different decisions on that question.” Now the secret is unlocked, the referral was filed and is available on the EPO’s website.

Question 1 seems to be intended as the entrance door for question 2. Question 1 is concerned with a methodological question, i.e. how to assess whether a provision of the Implementing Regulations is in conflict with a provision of the Convention when applying Article 164 (2) EPC. T 1063/18 felt bound by the Enlarged Board’s interpretation of Article 53 b) in the cases Tomatoes II and Broccoli II and the referral suggests that there are divergent decisions in this respect, referring to decisions acknowledging the Administrative Council’s competence to give “a more detailed interpretation of the meaning of provisions of the Convention.”

The referral submits that the admissibility of question 2 should follow from the admissibility of question 1 since the compliance of Rule 28(2) EPC with Article 53(b) EPC depends on whether the earlier interpretation of said Article in decisions Broccoli II and Tomatoes II is seen as precluding the Administrative Council’s clarification of Article 53(b) EPC. Whereas the relation between the two questions can hardly be contested, it is also apparent that the referral does not present decisions of the Boards of Appeal which have given different answers on Question 2.

This may be the reason for the referral’s alternative approach for the admissibility of Question 2: Application of Article 112 (1) b) EPC by analogy. Analogy has been accepted in the case law of the EBA as a legitimate means of developing the law. However, the EBA has been reluctant in applying this legal tool when the jurisdictional structure of the European patent system was at stake.

In G 1/97 – Request with a view to revision/ETA, the EBA observed that in a codified legal system such as the EPC, the judge cannot simply decide, as the need arises, to substitute himself for the legislator, who remains the primary source of law. The scope of the competence of the President of the EPO to refer points of law to the EBA is an eminently political question touching the principle of separation of powers. In G 3/08 – Programs for computers, the EBA speaks of the exhaustive list of admissibility criteria for a referral and observes that it is time for the legislator to take over when judiciary-driven legal development meets its limits.

A copy of the referral can be read here.