By Agnes Jung - Trainee Patent Attorney - Life Sciences
FOR THE LATEST UPDATE, SEE OUR ARTICLE HERE: https://wynne-jones.com/news-events/2018/12/epo-board-of-appeal-finds-that-plants-stararestar-patentable-at-the-epo-rule-28-2-epc-is-unenforceable/
Last July we reported1 on the introduction of new Rule 28(2) EPC regarding the patentability of plants and animals obtained by “an essentially biological process”.
Following this, a case2 is now going to appeal at the EPO to contest the interpretation and validity of this new Rule. Significantly this will be the first case to go to the Boards of Appeal since Rule 28(2) EPC was implemented. Oral proceedings are scheduled to take place on 5th December 2018.3
The outcome of these proceedings will therefore be important for determining strategies for current and future patent applications.
In this article, we look at the background of Rule 28(2) EPC, details of the appeal case, possible outcomes at the oral proceedings (including the next case to watch if the appeal is refused), and strategies for patent applications at different stages.
Background
“(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.”
Syngenta’s appeal case
In its March 2018 decision to reject the claims, the Examining Division reasoned that the claimed subject matter would fall into the exclusion of patentability as set out in Article 53(b) EPC and the newly added Rule 28(2) EPC.
This decision led to Syngenta filing an appeal against the decision of the Examining Division. Soon after the appeal was filed, three sets of third party observations were submitted by two parties (detailed below), all supporting Syngenta's case and disputing the validity of Rule 28(2) EPC.
In the first set, Solynta, a potato breeding company based in the Netherlands, has asked the EPO to review the legitimacy of the Rule 28(2) EPC. Having had its own patent application EP26996847 stayed following the Commission Notice, Solynta has requested a stay of proceedings for its own European patent applications in view of the present appeal proceedings.
In the second set of observations, a patent attorney firm presents arguments on the same basis as our July 2017 article1.
In the third set of observations, the same patent attorney firm argued that Rule 28(2) EPC is incompatible with the European Convention on Human Rights.
Expansion of the Board of Appeal
The Board of Appeal handling this case was recently expanded to include two additional members, including one legally qualified member. It would therefore appear that the Board of Appeal foresees complex legal arguments being made at the oral proceedings.
Opinion of the Board of Appeal and further communication
In early October, the Board of Appeal issued a communication indicating a lack of clarity (Article 84 EPC) and inventive step (Article 56 EPC) regarding claims 1, 2 and 3.
In a response dated 26th October, Syngenta has submitted arguments in response to the clarity and inventive step objections, and has made several requests, including referral to the Enlarged Board of Appeal.
What will happen at the Oral Proceedings?
Three basic outcomes are possible at the Oral Proceedings:
Strategy for patent applications
In its Statement of Grounds of Appeal, Syngenta has noted that there are multiple pending cases in examination, opposition or appeal that are affected by the Rule 28(2) EPC. The next appeal case that we are aware of where Rule 28(2) EPC is at issue is EP28250248, relating to a tomato plant. Thus, should the December hearings not conclude on the validity of Rule 28(2) EPC, this will be the next case to follow.
Another case to note that is scheduled for oral proceedings is an opposition against EP21668339, relating to a seedless pepper plant and for which inter partes oral proceedings are due to take place in February 2019 (opposition proceedings do not result with a binding decision).
For patent applications that were recently refused on the grounds of Rule 28(2) EPC, it may be worth filing an appeal.
For applications that are later in the EPO patenting process, it may be beneficial to delay proceedings where possible, and when making any submissions include observations/comments regarding this appeal case and the forthcoming February opposition case.
For earlier stage patent applications, it may be worth delaying prosecution where possible whilst we wait for a final decision on the validity of Rule 28(2) EPC.
Update: 12.11.18
The EPO has revoked patent EP159796510 relating to a broccoli plant. The patent was granted in 2013 to Monsanto (acquired by Bayer), which was followed by a number of oppositions in 2014. According to No Patents on Seeds (an alliance of organisations including Greenpeace), this ruling is the first time Rule 28(2) EPC has led to the revocation of a patent. 11 However, the interpretation of Rule 28(2) EPC still requires clarification, as recently in October 2018, the EPO rejected oppositions against patents held by Carlsberg and Heineken relating to a strain of barley (EP238411012 and EP237315413).
Update 07.12.2018
EPO BOARD OF APPEAL FINDS THAT PLANTS *ARE* PATENTABLE AT THE EPO - RULE 28(2) EPC IS UNENFORCEABLE, read the full article here.
If you own any intellectual property (IP) rights, are you concerned about your exposure to litigation, and how you will finance any legal action? One way to address this concern is by means of an insurance policy.
A recent study performed by the European Patent Office (EPO) and the European Union Intellectual Property Office (EUIPO) has shown that companies which own at least one patent, trade mark or registered design generate on average 20% higher revenues per employee and pay their staff on average 19% higher wages compared to companies that do not own any of these intellectual property (IP) rights.
Keeping an IP budget afloat despite sunk costs.
The cost of securing IP can be heavily front loaded. Examples of such costs include patent drafting, pre-filing searches, filing fees, etc. These costs become “sunk” costs in that they cannot be recovered. Because IP protection can be a relatively long process, at any time during the process there are likely to be significant “prospective” costs: future costs that may be wholly or partially avoided depending on actions taken.
Have you recently validated your European patent in Turkey? Did you know that in addition to paying annual renewal fees, Turkish law also requires you to submit a public declaration stating whether you have actively worked your invention in Turkey?
UK businesses are fighting for survival during the continuing COVID-19 outbreak and trying to trade under difficult conditions, the likes of which haven’t been seen in the living memory of most business people. If you’re afraid that your business is going to the wall, it probably isn’t the top of your mind to pay for a patent application for your new technology or a registration of the trade mark for your brand new clothing range, right? Where is the money coming from to invest in such luxuries as IP, we hear you say, when staff are being furloughed and orders have been postponed?
The European Patent Office has announced that videoconferencing will become the norm for oral proceedings before examination and opposition divisions until at least 15 September 2021. But is this a taste of what the future holds for oral proceedings at the EPO?
On 12 November 2019, the EPO and CNIPA agreed to enhance their bilateral co-operation to give patent applicants filing an international patent application in English at the CNIPA, the choice to opt for the EPO as their ISA. A two year pilot programme launched on 1 December 2020, offers applicants filing international applications with the CNIPA or the International Bureau (IB) of the World Intellectual Property Office (WIPO) the opportunity to select the EPO as their ISA and as their International Preliminary Examining Authority (IPEA), rather than CNIPA.
In October 2020, the UK Government declared that the territorial effect of five important IP treaties would be extended to cover Gibraltar from 1 January 2021. These treaties are the Paris Convention, the Patent Cooperation Treaty, the Madrid Protocol (on International trade marks), the Nice Agreement (on trade mark classification), and the Berne Convention (on copyright). Following on from this, a bill was passed in on 11 December 2020, making some amendments to trade mark and patent law in Gibraltar.
Due to the coronavirus outbreak and recent health advice, the WJ team are working from home. It’s business as usual however some services may be slightly slower than normal so please bear with us during this time. As our offices are currently closed we will not be able to access postal mail so please send correspondence and documents by email on docketing@wynne-jones.com. Our telephones have been diverted so the WJ team are still contactable by phone on 01242 267 600.
