Stay ordered in a rush

Today’s post will remain delightedly short – for once – as I would just like to update readers on the currently hot topic of “biological patents” (this expression being a shortcut of course). 

At the end of a recent post co-penned with Lionel Vial, I briefly mentioned a notice by the European Commission regarding the so-called biotech Directive 98/44/EC. The Commission took the view in this notice that the EU legislator’s intention in the Directive was to exclude from patentability products (plants/animals and plant/animal parts) that are obtained by means of essentially biological processes.

This view by the Commission is contrary to the position recently taken by the Enlarged Board of Appeal in decisions G 2/12 and G 2/13 of the Tomato and Broccoli sagas. The final words in the post were that patentability of biological materials in Europe is currently on moving grounds, and that more episodes of this developing story were to be expected.

No, this is not an illustration of a EU commissioner. I was just wondering whether this creature was obtained through an essentially biological process.
No, this is not a picture of a EU commissioner. I was just wondering whether this creature was obtained through an essentially biological process.

However, what Lionel and I did not expect is that the new developments would be so quick.

According to a notice from the EPO dated November 24, 2016 (but actually published only on December 12), “follow-up measures” further to the Commission’s notice are under discussion with representatives of the member states of the European Patent Organisation.

In the meantime, the president of the EPO has decided that all proceedings before examining and opposition divisions in which the decision depends entirely on the patentability of a plant or animal obtained by an essentially biological process will be stayed ex officio.

This notice from the EPO does come as a surprise.

Clearly, the notice from the European Commission has no binding effect on the EPO. The EPC is a non-EU international agreement. Rule 26 EPC specifies that the biotech Directive shall be used “as a supplementary means of interpretation” when it comes to European patent applications and patents concerning biotechnological inventions. But there is no organic link between EU institutions and the EPO. Thus, the EPO or the Enlarged Board of Appeal may very well have a different interpretation of the biotech directive than the EU institutions.

On the other hand, since the majority of the EPC contracting states are members of the EU (and this is supposed to remain the case in the future, Brexit notwithstanding), some consistency between the approaches taken by the various institutions involved would be highly desirable.

Gossip has it that the president of the EPO is looking for any opportunity to throw tomatoes (or broccoli) at the Enlarged Board of Appeal – things between them being what they are. Now, gossip is seldom reliable; but is it conceivable that the EPO management might currently show less deference to the Enlarged Board’s views on a number of topics than in the past?

What will happen next is anyone’s guess – though of course the stay of proceedings does not bode well for biological product patents or applications.

  • Will the EPO align its practice on the Commission’s notice? If so, how? Will an amendment of the Implementing Regulations be proposed?
  • Shouldn’t the EPO wait first for the Court of justice of the EU to have its say on the matter, one way or another? After all the Luxembourg judges may not necessarily share the same interpretation of the Directive as the Commission.

The bottom-line is that the fate of products obtained by essentially biological products is becoming again very much a matter of public policy.

In this respect, it is quite interesting to note that France, sometimes mocked by its neighbors for its handling of patent matters, was first to act before the Commission’s notice, as reported in the earlier post.

Finally, as explained by Lionel in the post, most interesting is the definition of which processes are essentially biological and which processes are not. Various stakeholders have vastly different views in this respect. Is it possible that, on this issue as well, the Boards of Appeal’s position could at some point of time be at odds with that of member states or EU institutions?

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