[Disclaimer: I represent clients in India in ongoing litigation on related and unrelated issues. Views expressed here are strictly personal.]
The IPKat recently reported that the Enlarged Board of Appeal operating under the EPC regime handed down its ruling in G 3/19 on the patentability of plants and animals developed from essentially biological processes. The Enlarged Board of Appeals has approved the Rule 28(2) recently inserted in Implementing Regulations of the European Patent Convention, by which products exclusively obtained by essentially biological processes were declared not patentable. They were declared not patentable in the context of the exclusion in Article 53(b) of the EPC – “…essentially biological processes for the production of plants or animals”.
In substance, the Enlarged Board of Appeals has basically recognised that this exclusion, while worded to apply to process claims, would also extend to the products obtained by such process. In my reading, the opinion (rather, should I say, change of heart?) seems heavily influenced by the subsequent factual/ legal developments in terms of how the majority of members supported the insertion of Rule 28(2) and how significant number of members within the EU already had and/or were otherwise proposing amendments to their respective legislations to the same effect.
I have previously written on this when the controversial Rule 28(2) was inserted by the Administrative Council. I don’t intend to repeat much of what was said then, except to reiterate that none of this has any impact as far as India is concerned because of the differences in statutory language.
Nevertheless, I am reproducing an updated version of the table I had created in my earlier post and modifications, if any, arising from this latest ruling of the Enlarged Board of Appeals, marked in red:
| EPC Before G 3/19 | EPC After G 3/19 | India | |
| Products isolated from nature (e.g. genes or proteins isolated from nature) | Patentable as per conditions in Article 5(2)-(3) of Directive 98/44/EC | No change | Not-patentable as per Section 3(c) |
| Man-made DNA sequences | Patentable | No change | Sub judice before Hon’ble Delhi High Court in Monsanto Technology LLC & Ors. v. Nuziveedu Seeds Limited & Ors., and connected cases |
| Biotech method claims | Patentable | No change | Patentable |
| Essentially biological processes (these are methods / process claims) | Not patentable | No change | Not patentable |
| Plant or animal varieties | Not patentable | No change | Not patentable |
| Plants or animals (as opposed to plant varieties) developed using genetic engineering techniques | Patentable | No change | ? |
| Plants or animals (as opposed to plant varieties) defined or obtained by developed using essentially biological process (these are typically product claims) | Patentable | Not patentable | Not patentable |
As can be seen, in my reading nothing really changes except for the minor amendment I have done to the table above in the identification of what is not patentable – this accounts for product-by-process claims. For the Indian context, except for the fact that the judgement makes an interesting read, it does not bear significant relevance to the construction of the Indian statute.
