Adding pepper to a tomato and broccoli salad

At this time, all readers are probably already aware of the issuance of opinion G 3/19 of the Enlarged Board of Appeal on May 14, 2020.

I know, twelve days is a long time in the internet era.

But trust me, Lionel Vial’s below report on this topic is worth reading.  Lionel loves making predictions, and his forecast on plants and animals obtained by essentially biological processes is that this hot topic is not about to cool down and that we are in for ongoing legal controversy – and possibly one or more future referrals.  

Is the illustrated cactus a plant obtained by an essentially biological process?

Here is Lionel’s report.

As this blog has consistently strained to keep pace with the seemingly never ending developments regarding the patentability of plant and animals obtained by essentially biological processes, as reported here, here and here, we felt compelled to comment on opinion G 3/19 of the Enlarged Board of Appeal (EBA) of the EPO, which was rendered on May 14, 2020.

To make a long story short, G 3/19 (Pepper) follows from a referral pursuant to Article 112(1)(b) EPC of the President of the EPO, itself following from decision T 1063/18 of Board of Appeal 3.3.04 of December 5, 2018, which decided that in accordance with Article 164(2) EPC, the interpretation of Article 53(b) EPC by the EBA in decisions G 2/12 (Tomatoes II) and G 2/13 (Broccoli II) prevailed over Rule 28(2) EPC.

In other words the Board of Appeal decided plants and animals obtained by essentially biological processes were not to be considered exceptions to patentability pursuant to Article 53(b) EPC in spite of Rule 28(2) EPC, which was introduced by a Decision of the Administrative Council of June 29, 2017 and entered into force on July 1, 2017. Rule 28(2) EPC provides that under Article 53(b) EPC, European patents shall not be granted in respect of plants or animals exclusively obtained by means of an essentially biological process.

There are two parts in opinion G 3/19, a part which relates to institutional provisions and a part which relates to substantive provisions.

Turning first to the substantive part of the opinion, which directly impacts daily practice at the EPO, the EBA, adopting a “dynamic interpretation” of Article 53(b) EPC for the circumstance, has abandoned the interpretation of Article 53(b) EPC given in decision G 2/12 and G 2/13, in the light of Rule 28(2) EPC.

As a consequence, this new understanding of Article 53(b) EPC has a negative effect on the allowability of product claims or product-by-process claims directed to plants, plant material or animals, if the claimed product is exclusively obtained by means of an essentially biological process or if the claimed process features define an essentially biological process.

It is to be noted that the EBA goes beyond the wording of Rule 28(2) EPC and also excludes plant material exclusively obtained by means of an essentially biological process. This may call for future clarification (see below).

Besides, in order to ensure legal certainty and to protect the legitimate interests of patent proprietors and applicants, the Enlarged Board ruled that the new interpretation of Article 53(b) EPC given in G 3/19 has no retroactive effect on European patents containing such claims which were granted before July 1, 2017, when Rule 28(2) EPC entered into force, or on pending European patent applications seeking protection for such claims which were filed or have a priority date before that date.

This contradicts the Decision of the Administrative Council which provided in its Article 3 that Rule 28(2) EPC applied to European patent applications filed on or after July 1, 2017, as well as to European patent applications and European patents pending at that time.

At this stage of the post, we should self-congratulate for having foreseen in our previous post on the subject of July 3, 2017 that the consequence of the Decision of the Administrative Council would be that plants and animals exclusively obtained by means of an essentially biological process are exceptions to patentability, but that the new Rule 28(2) EPC could not apply to patents and applications filed before July 1, 2017. However, to be frank, at that time we had not anticipated that a Board of Appeal would refuse to apply Rule 28(2) EPC pursuant to Article 164(2) EPC because it was in contradiction with the interpretation of Article 53(b) given by the EBA.

This brings us to the institutional part of the opinion of the EBA.

The EBA does not consider that there would be a general prohibition on adopting secondary legislation [by the Administrative Council] which concerns the interpretation of a provision of primary legislation given by itself (see point XXV.3.1).

Besides, the EBA considers that the exception to patentability brought by Rule 28(2) EPC is not incompatible with the wording of Article 53(b), which does not rule out this broader construction of the term “essentially biological processes for the production of plants or animals” and that Rule 28(2) EPC could be considered to reflect the Contracting States’ intention to give a special meaning to that term (see point XXVI.6).

As such, the new Rule 28(2) EPC has to be taken into account in the dynamic interpretation of Article 53(b) as seen above.

It follows that the content of Rule 28(2) EPC does not stand in contradiction with the new interpretation of Article 53(b) EPC given by the EBA and that there is no conflict between these provisions. Hence, Article 164(2) EPC is not relevant (see point XXVII of the opinion).

As far as we are concerned, we are not sure if it was ever the initial intent of those who drafted the EPC to have the substantive patent law provisions of the EPC, especially Chapter I Patentability, interpreted by the Implementing Regulation, but let’s not be more Catholic than the pope.

So, is this the end of tomatoes, broccoli or pepper decisions? Let us take another bet here: No, in our opinion, other questions will need to be answered by the Boards of appeal of the EPO and perhaps by the EBA.

Here is a short list, probably not exhaustive, of likely questions:

        • Can parts of plants, such as fruits, be considered to be exclusively obtained by means of an essentially biological process?
        • Are plants or animals which are obtained by means of an essentially biological process but which can also be obtained by a non-essentially biological process exceptions to patentability?
        • Are plants or animals which are obtained by a process comprising an essentially biological process and a further step of a technical nature which does not serve to enable or assist the performance of the steps of sexually crossing the whole genomes of plants or of subsequently selecting plants exceptions to patentability?

Eventually, this leads us to our concluding riddle: After tomatoes, broccoli and pepper, what will be the name of the plant attached to the next decision, or opinion, of the EBA?


CASE REFERENCE: Enlarged Board of Appeal of the European Patent Office, G 3/19, May 14, 2020, Pepper (follow-up to “Tomatoes II” and “Broccoli II”).

Insufficiently disclosed or reasoned?

After almost 2 months spent buried at home, is there a more appropriate patent to discuss today than one relating to underground civil engineering equipment?

The patent in suit is FR 2941716, granted on April 22, 2011 to the French company SEMAP, and later limited in front of the INPI in July 2016.

SEMAP has been marketing underground chambers for the connection of e.g. telecom cables since 2013, via its distributor Frans Bonhomme.

The adverse party in the case is the British company Northstone (NI) Ltd., active in the same business, via its distributor PUM Plastique.

Since 2007, Northstone had been supplying the French telecom provider Orange with connection chambers. But in 2014, Orange revised the procurement of these goods and granted the entirety of the market to Frans Bonhomme – SEMAP’s distributor. Northstone learned on this occasion that Orange had concerns about a possible infringement of SEMAP’s FR’716 patent.

This led Northstone to initiate legal proceedings in March 2016, with a claim for nullity of the FR’716 patent, an auxiliary claim for a declaration of non-infringement, and an additional claim for damages due to disparagement.

An underground chamber suitable for the next confinement stage?

The plaintiff raised two grounds for nullity: insufficiency of disclosure and lack of inventive step.

Claim 1 of the patent as limited reads as follows:

Connection chamber device consisting in a rectangular cuboid part buried underground, closed on the upper side by one or more lids, and containing means for connecting wires or cables belonging to a distribution network, characterized in that it is constituted by the superposition, by interlocking means, of at least two elements, each obtained by molding a composite material, and each comprising a peripheral wall comprising two skins delimiting a space, as well as openings for the injection of concrete into said space, in that the upper element has means for adaptation of a frame for receiving one or more lids on its upper side, and in that the lower element comprises a bottom provided with water evacuation means, the bottom of the lower element being fixed thereto by interlocking means, which have the same profile as the interlocking means of the two lower and upper elements. 

The important part here is the presence of the openings for the injection of concrete. The nullity claimant argued that the disclosure of the patent was insufficient with respect to this particular feature.

The court, which we still need to get used to calling the TJ (tribunal judiciaire) instead of the TGI (tribunal de grande instance), made an important initial remark on the burden and standard of proof:

The party raising insufficiency of disclosure has the burden of proof. But the patentee needs to prove common general knowledge relied upon, which includes reference textbooks and general technical literature, but in principle not patent literature nor scientific articles. 

It is noteworthy that what is available as documentary evidence of common general knowledge seems to be the same for French courts as for the EPO.

In this case, the court did find that the disclosure was insufficient. Here is what it had to say on this matter:

The patent does not precisely disclose where and how the openings must be made, in order to pour concrete, nor the quality and consistence of the concrete that should be used. It does not discuss either the compatibility of the presence of “braced elements through the internal walls of the double skins” (p.2 l.5) or the presence of “transverse openings for passing wire or cables” with the injection of this concrete. 

At this stage I have mixed feelings about this assessment.

From an EPO perspective, an insufficiency objection presupposes serious doubts substantiated by verifiable facts. Here, the court only notes that some aspects are not discussed in the patent. But whether this does indeed raise difficulties for the skilled person is hard to determine based on such brief explanations.

It is possible that the claimant’s submissions contained more detailed and more convincing arguments, but if so they unfortunately did not find their way into the judgment.

What I do not have mixed feelings about, and what I actually take issue with, is the next part of the reasoning:

Even if, as suggested by SEMAP, the skilled person could do despite these shortcomings using common general knowledge, it remains that there is a blatant contradiction between claim 1 on the one hand, which in its characterizing portion mentions the existence of openings for pouring concrete, which thus appear to be an essential element of the invention, and the description of the patent on the other hand, which mentions towards the very end the advantageous possibility (and therefore not mandatory for implementing the invention) of injecting this material. In view of this contradiction, which does not make it possible for the skilled person to determine whether the presence of openings is necessarily required, or if it is only optional, the patent is insufficiently disclosed and must thus be revoked. 

This, with all due respect, seems to be over the top.

Of course the presence of the openings is required, since it is explicitly recited in claim 1. The mere fact that the word “advantageously” is used in the description to introduce these openings does not make any difference.

Assuming that there is indeed a contradiction between the claims and the description, it appears to be a merely formal one, not a substantial one leading to actual implementation difficulties.

And it could even be argued that there is no contradiction at all, since “advantageously(“de manière avantageuse“) could plausibly be understood as meaning that this is an advantage of the invention (not an optional feature of the invention).

Truth be told, it is not the first time that a French court has picked up on some unfortunate but truly minor drafting inaccuracy and has blown it out of proportion.

The patent being revoked on the ground of insufficiency, inventive step was not addressed.

As for the disparagement claim, it was rejected. There was evidence that Orange had been warned about a potential infringement of SEMAP’s patent. But, unfortunately for the plaintiff, based on the available paper trail, it was not proven that SEMAP was directly responsible for this patent infringement rumor.

There is thus cause for unhappiness for both parties, and it is hard to tell which one is more disgruntled – especially since the court, in a not-so-common move, did not award any cost order under article 700 CPC against either party.


Tribunal judiciaire de Paris, 3ème chambre 3ème section, January 10, 2020, Northstone (NI) Ltd. v. SEMPA SAS & SEMAP Composite SAS, RG No. 16/04839.