The non-patentable “pepper” fruit

Not seen before – the EPO reverts its case law.

The patentability of plants and/or parts of plants in the European patent system has long been the subject of heated debate. Nevertheless, for a long time the law appeared to develop incrementally in favour of limited patentability, opening up new possibilities for the protection of plants and parts of plants – even if produced by an essentially biological process (G2/12 and G2/13).

​The Decision

Recently the Enlarged Board of Appeal of the European Patent Office (EPO) has finally decided, in its decision G3/19 (“Pepper”) issued in May and probably published later this month, no European patents will be granted on plants or parts of plants produced by essentially biological processes. The Enlarged Board of Appeal has thus also confirmed a strict interpretation of Rule 28(2) EPC in barring the patenting of “plants… exclusively obtained by means of an essentially biological process.”

The Enlarged Board of Appeal thus abandons its previous case law and in fact reverses it, placing Applicants making developments and improvements in the field of agriculture and crops at a disadvantage. There is a transitional arrangement whereby patents applied for or granted before 1 July 2017 enjoy grandfathering protection, but this is of doubtful benefit as, even if these confer rights supported by previous case law, the question arises as to whether such patent rights will be held to be valid in the future.

Conclusion

From our point of view as an IP-law firm involved in the biotech sector, this morally well-founded development seems like a step backwards.

At the same time, the interested observer will be greatly reassured by the fact that the Articles and Rules of the EPC can be relied upon and that even the Enlarged Board of Appeal cannot simply ignore their regulatory force. Thus, this decision reflects well on the strategic skill of the Enlarged Board of Appeal, in clarifying the hierarchy between EPC, guidelines and case law and ultimately also between the European Patent Office and the EPC member states.

So, your IP rights for developments of plant innovations must recast themselves, we may help you.