Recent Decisions of EPO’s Enlarged Board of Appeal

EPO’s Enlarged Board of Appeal has issued a number of decisions recently. Two decisions relate to Patentability of plants and plant products under the EPC. One decision relates to Clarity of claims and amended claims in opposition and appeal proceedings before the EPO. …

…. The first case related to the question if a claim is amended during Opposition proceedings before the European Patent Office can be scrutinised to check that its meaning is clear? Further, if so, are there any limits to the extent of this scrutiny, or to the types of amendments which can be examined for clarity?

On 24 March 2015 the Enlarged Board issued its decision. It has over 90 pages in length, and the decision is not the easiest to digest. It contains a number of aspects which are likely to provoke further discussion. In its decision G 3/14 the Enlarged Board of Appeal has decided that the clarity of the amended claims of a patent may be examined in opposition proceedings only when, and then only to the extent that the amendment introduces non-compliance with Article 84 EPC. This is, in particular, not the case where the amendment consists of the literal insertion of complete dependent claims as granted into an independent claim; or in case of the introduction into an independent claim of alternative embodiments contained in a dependent claim.

The decision confirms thus that amendments based on features present in the claims as originally granted cannot generally be re-examined for clarity during Opposition proceedings, even where those features are arguably unclear.

This decision may disappoint opponents hoping that an alleged lack of clarity could de facto become a wide-ranging ground for invalidating a European patent. On the other hand, patentees may welcome the certainty that a claim feature which has been found to be clear during examination of the patent application cannot subsequently be refused as being unclear during Opposition proceedings. In any case, features which are newly-introduced to the claims – i.e. features based on the description or drawings which were not present in the originally-granted claims – are not subject to the same restriction, so opponents and patentees alike should be aware of any arguable lack of clarity in such features. Parties to Opposition proceedings should also bear in mind that while a lack of clarity is not a ground of opposition as such, clarity can still be relevant in opposition proceedings to the extent that the effect of a prior art document may depend on the interpretation of an unclear claim.

Overall, G 3/14 may not bring lack of clarity into play in Opposition proceedings to the extent opponents may have liked and patentees feared. It does neither provide a blanket defence against allegations of lack of clarity under all circumstances.

The other decisions are known as Brocolli II and Tomato II. In the area of plant breeding and genetic engineering, plants, parts or products thereof are patentable under the European Patent Convention (EPC) as long as the feasibility of the invention is not restricted to a particular plant variety. Plant varieties on the other hand are specifically excluded from patentability by virtue of Art. 53(b) and Rule 27(b) EPC. These are protectable through plant breeders rights. Art 53(b) EPC also prohibits claims directed to an essentially biological process for the production of plants, see also Broccoli I G2/07 and Tomato I G1/08. The fundamental question the Enlarged Board of Appeal (EBA) at the European Patent Office (EPO) answered in the consolidated proceedings in Broccoli II (G2/13) and Tomato II (G2/12) was if this exclusion of process claims does impact on the allowability of plants that are produced by such a process?

In the referral cases G 2/12 and G 2/13, which were considered in consolidated proceedings, the Enlarged Board of Appeal has decided that the exclusion of essentially biological processes for the production of plants in Article 53(b) EPC does not have a negative effect on the allowability of a product claim directed to plants or plant material such as a fruit or plant parts. This applies even if the only method available at the filing date for generating the claimed plants or plant material is an essentially biological process for the production of plants, and also if the claimed product is defined in terms of such a process (product-by-process claim). In this context it is of no relevance that the protection conferred by the product claim encompasses the generation of the claimed product by means of an essentially biological process for the production of plants. Product claims or product-by-process claims directed to plants or plant material other than a plant variety thus are not excluded from patentability under Article 53(b) EPC and are allowable if they fulfil the formal and substantive requirements of the EPC.