Update on Patentable Biotechnological Inventions at the EPO

By: Alexandre Picot


The European Patent Office made the decision to exclude from patentability plants and animals exclusively obtained by an essentially biological breeding process. The new provisions come into effect immediately, starting July 1, 2017.

The European Patent Office (EPO) has decided to take account of the Notice of the European Commission from November 2016 on certain articles of Directive 98/44/EC of the European Parliament and of the Council on the legal protection of biotechnological inventions which considered that, just as “essentially biological processes for the production of plants or animals” (see article 4 of the EU Directive on biotechnological inventions (98/44/EC)), “plants and animals derived from essentially biological processes” should be excluded from patentability.

Accordingly, the European Patent Office made the decision to exclude from patentability plants and animals exclusively obtained by an essentially biological breeding process.

Thus, the EPO has taken the opposite position with respect to the most commented decisions G 2/12 (“Tomatoes II”) and G2/13 (“Broccoli II”) of the EPO’s Enlarged Board of Appeal, which considered at the time that the exclusion of essentially biological processes for the production of plants in Article 53(b) EPC had no negative effect on the allowability of a product claim directed to plants or plant material, such as a fruit or plant parts.

The new provisions will come into effect immediately, starting on July 1, 2017.  Additionally, Rules 27 and 28 of the Implementing Regulations to the EPC have been amended as follows:

New paragraph 2 Rule 28 EPC:

“(2) Under Article 53(b), European patents shall not be granted in respect of plants or animals exclusively obtained by means of an essentially biological process.”

Paragraph (b) of Rule 27 EPC:

“(b) without prejudice to Rule 28, paragraph 2, plants or animals if the technical feasibility of the invention is not confined to a particular plant or animal variety;”

The examination and opposition cases concerning plants or animals obtained by an essentially biological process, which had been stayed since November 2016 in response to the conclusions of the Notice of the European Commission, will now gradually resume and will be examined according to the clarified practice.