“You like to-may-toes, I like tom-mah-toes…let’s call the whole thing off” Gershwin and Gershin 1937

As reported earlier, the European Union Commission (EUC) had last year issued a Notice on certain articles of EU Biotechnology Directive  (Directive 98/44/EC) which indicated that, in the view of the EUC, the correct interpretation of the EU Biotechnology Directive is that plants and animals obtained by means of essentially biological processes are also excluded from patentability.

In a meeting of 20 February 2017, the Council of the EU/Competitiveness Council adopted conclusions welcoming the Notice and also recalled that the EU legislator's intention when adopting the EU Biotechnology Directive had been to exclude from patentability products obtained through essentially biological processes, and urged member states to advocate that the practice of the EPO be aligned with the EUC Notice.

Following a meeting of the EPO Administrative Council yesterday (29 June 2017), the EPO has adopted amendments to Rules 27 and 28 EPC which give full legal force to the guidance of the EUC and the Council of the EU.  These amendments, which state that “patents shall not be granted in respect of plants or animals exclusively obtained by means of an essentially biological process", will come into force 1 July 2017 and will apply to existing patents and patent applications, thus invalidating previously good subject matter at a stroke.

The actions of the EPO in this regard may raise eyebrows.  Although the EPO’s hands have appeared tied on this matter of reversing previously held patentability requirements which have been confirmed up to the Enlarged Board of Appeal (G2/12 and G2/13), by not waiting until the Court of Justice of the European Union (CJEU) could confirm its agreement with the EUC’s guidance, a law change has been introduced by the actions of purely executive bodies. 

This may have financial and constitutional implications for EU member states, not to mention the perceived injustice against EP patent applicants/owners of previously valid patent claims to plants or animals exclusively obtained by means of an essentially biological process.  This injustice might be even more difficult to swallow by the citizens of non-EU states signed up to the EPC (e.g. Switzerland, Norway and Iceland amongst others) on which the opinion of an executive, but not a judicial body, of the EU has been imposed.

It has been pointed out, not least by the EUC themselves in their Notice on this issue, that “only the CJEU is competent to interpret Union law”.  Indeed, this is enshrined in the Treaty on the Functioning of the European Union (TFEU) at Article 267. Thus, acting swiftly in a desire to maintain harmonisation across the EU on this point and so not waiting for the CJEU’ s input, the EPO’s actions on behalf of its EU contracting states could be taken as a circumvention of their obligations under the TFEU. Failure to comply with the obligations of the TFEU can lead to financial liabilities for the member states and constitutional issues for countries whose constitutions incorporate the provisions of the TFEU.

Of course, against this backdrop of rulemaking by the EU’s executive bodies looms the matter of Brexit – will UK legislators seek to set UK patent law on a different path following its release from the bindings of EU law…?