2.4. Referral by the President of the EPO

In G 3/19 (OJ 2020, A119) the Enlarged Board rephrased the two questions set out in the referral of the EPO President into a single question that articulated the real issue at stake: "Taking into account developments that occurred after a decision by the Enlarged Board of Appeal giving an interpretation of the scope of the exception to patentability of essentially biological processes for the production of plants or animals in Art. 53(b) EPC, could this exception have a negative effect on the allowability of product claims or product-by-process claims directed to plants, plant material or animals, if the claimed product is exclusively obtained by means of an essentially biological process or if the claimed process feature[s] define an essentially biological process?" It considered that the issues underlying the referral concerned a point of law of fundamental importance within the meaning of Art. 112(1) EPC which required a uniform application of the law. Concerning the second admissibility point under Art. 112(1)(b) EPC ("different decisions" of "two Boards of Appeal"), the Enlarged Board considered the term "different" had to be interpreted in the light of the provision's object and purpose according to Art. 31 Vienna Convention (G 3/08, OJ 2011, 10, point 7 of the Reasons et seq.; G 3/95, OJ 1996, 169, point 8 of the Reasons). The purpose of the EPO President's power to refer points of law to the Enlarged Board was to establish uniformity of law within the European patent system. Having regard to this purpose, the term "different decisions" had to be understood restrictively in the sense of "conflicting decisions". Legal development could not on its own form the basis for a referral, because case law did not always develop in a linear fashion, and earlier approaches may be abandoned or modified. The EPO President argued that the approach adopted in T 1063/18, according to which the interpretation of Art. 53(b) EPC given in decisions G 2/12 (OJ 2016, A27) and G 2/13 (OJ 2016, A28) (hereinafter G 2/12) would exclude any subsequent clarification in the Implementing Regulations which deviated from that interpretation, differed from other decisions relating to the EU Biotech Directive (e.g. T 272/95, OJ 1999, 590; T 315/03, T 666/05 and T 1213/05). The Enlarged Board found the aforementioned decisions could be read as acknowledging that a subordinate but later provision of the Implementing Regulations could have an impact on the interpretation of a higher-ranking and previously enacted provision of the Convention, irrespective of a particular interpretation given to the latter in an earlier decision by a board of appeal. In T 1063/18, the board of appeal did not examine whether the interpretation of Art. 53(b) EPC could be affected by R. 28(2) EPC on the basis of Art. 31(3) Vienna Convention. Rather, it established that R. 28(2) EPC was in contradiction to the particular interpretation of Art. 53(b) EPC given in decision G 2/12 before the Rule was adopted (points 24 to 26 and 46 of the Reasons) and that the Administrative Council was not competent to amend Art. 53(b) EPC by means of R. 28(2) EPC (points 31 to 36 of the Reasons). As a consequence, the board disregarded R. 28(2) EPC pursuant to Art. 164(2) EPC because it considered the Rule to deviate from the interpretation given in an earlier decision of the Enlarged Board. The Enlarged Board found that this aspect constituted the difference from other aforementioned board of appeal decisions, which evaluated the impact of a later-adopted provision of the Implementing Regulations on the construction of a provision of the Convention. Hence, the Enlarged Board considered that there were different decisions of two boards of appeal on the question whether an amendment to the Implementing Regulations can have an impact on the interpretation of an Article of the EPC. As a consequence, the EPO President's referral complied with the requirements of Art. 112(1)(b) EPC and was admissible within the terms of the question as rephrased by the Enlarged Board. See also chapter I.A.1. "Product claims for plants or plant material".