December 5, Munich - In a recent decision regarding a pepper plant application, the EPO Board of Appeal held that Rule 28 (2) EPC was in conflict with Article 53 (b) of the European Patent Convention (EPC), hence reinforcing the interpretation provided by the Enlarged Board of Appeal in cases G 2/12 and G 2/13 (Broccoli II and Tomato II) in 2015.
The present case relates to the European Patent Application (EP 2753168) for a pepper plant with improved nutritional value filed by Syngenta Participations AG. The application was initially rejected by the Examining Division in accordance with the amended Rule 28 (2) EPC. The Examining Division argued that “only the Board of Appeal has jurisdiction to review the compliance of the provisions of the Implementing Regulations with those of the Convention” and, therefore, both the Examining and the Opposition Divisions were bound by Rule 28.
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Syngenta appealed the decision before the Board of Appeal (T1063/18) claiming, among other things, that in view of Article 164 (2) EPC, Rule 28 (2) EPC cannot be applied. Said Article stipulates that in such cases, Convention Articles shall prevail over the Rules.
During the oral proceeding on December 5, the Board of Appeal dismissed the Examining Division’s decision. The Board held that Rule 28 EPC was indeed in conflict with Article 53 (b), and the correct interpretation of Article 53 (b) had been given by the Enlarged Board of Appeal in the well-known Tomato and Broccoli cases. This would mean that the amendment of Rule 28 EPC shall be deemed null and void and, ergo, plants obtained from an essentially biological process are to be held patentable.
The case has been remitted back to the Examining Division for further prosecution of the application process. The written decision on the appeal is expected to be issued early in 2019.
For Syngenta, the decision represents a special triumph. A few weeks ago, a previous Patent on a broccoli plant “adapted for ease of harvest” owned by Syngenta was revoked pursuant to Rule 28 (2) EPC after an Opposition procedure. After the December 5 decision, the company immediately appealed the revocation of its broccoli patent.
This Board of Appeal’s decision in the pepper case is an exciting twist in the European handling of plant patentability. It reaffirms the position of CIOPORA that the binding Tomato II and Broccoli II decisions provide the only correct interpretation on this matter. CIOPORA is awaiting the decision publication to conduct a detailed analysis.