With respect to plant varieties or essentially biological processes for the production of plants, the European Patent Law (European Patent Convention, EPC) codifies exceptions to patentability according to Article 53(b) EPC, i.e. no European patent can be granted in this respect. Claims on plants obtained by a technical process could however be allowed, provided that specific plant varieties were not individually claimed (G 1/98).
But what about the products of essentially biological processes? These are not explicitly mentioned in Article 53(b) EPC rendering said Article open for interpretation.
This question was matter of great debate over the last years, not only on the level of the EPO, but due to its ethical and economic impact on a political level involving the European Commission as well as the EPC Contracting States with their diverging own national legislations.
A certain clarity on this question was reached after decisions Tomato II (G2/12) and Broccoli II (G2/13) of the EPO's Enlarged Board of Appeals (EBA). In both cases, the EBA interpreting Article 53 found that any exclusion from patentability shall be interpreted narrowly and that the exclusion from patentability of "essentially biological processes for the production of plants" shall not exclude plants produced by those methods, provided that those plants are novel and inventive.
With the intention to clarify the meaning of Article 53(b) EPC, to harmonize the national laws of the EPO member states and to follow the direction of the European Commission, the Administrative Council of the EPO decided to amend Rule 28 of the Implementing Regulations to the EPC in June 2017 to read: "(2) Under Article 53 (b), European patents shall not be granted in respect of plants or animals exclusively obtained by means of an essentially biological process". After this amendment, plants produced by essentially biological processes once decided to be allowable under the EPC following the interpretation of Article 53 (b) EPC of the EBA mentioned above, were explicitly excluded from patentability.
All the more striking and surprising is now decision T 1063/18 by Technical Board of Appeal (TBA) 3.3.04 dated December 05, 2018. Briefly, patent application No. 12 756 468.0 entitled "New pepper plants and fruits with improved nutritional value" was refused by the examining division for the sole reason of falling within the exceptions to patentability under Article 53(b) EPC in conjunction with Rule 28(2) EPC. In the present appeal decision, the TBA – in an enlarged composition consisting of three technically and two legally qualified members – now found that new Rule 28 (b) was in conflict with Article 53 (b) EPC when following the interpretation of Article 53(b) EPC evolved by the EBA in Tomato II and Broccoli II due to a de facto binding effect of both decisions on the Boards of Appeal. According to Article 164(2) EPC, the provisions of the Convention, i.e. Article 53(b) EPC, shall prevail in case of a conflict between the provisions of this Convention and those of the Implementing Regulations. Further, the TBA found that the implementation of new Rule 28(b) lacked a proper legal basis as actually, Rule 28(b) would resemble an amendment of the provisions of the Convention – not of the Implementing Regulations – thus requiring a proper legislative procedure in line with the EPC.
Following T 1063/18, it seems that the EPO has re-opened the possibility of gaining patent protection on plants exclusively produced by classical breeding techniques provided they are new and inventive. However, future developments, e.g. a further decision of the EBA or a proper legislative procedure with regard to the legal content of new Rule 28(b), are needed to create legal certainty with regard to plants. Further, Applicants in this field are faced with additional legal uncertainty in view of some EPC contracting states (including Germany, France and the Netherlands) having themselves codified the exclusion of patentability of plants exclusively obtained by means of an essentially biological process in their national law, thereby impeding enforcement of correspondingly granted EP patents in these countries. Clearly, further decisions and political efforts are needed in order to harmonize this situation throughout Europe.
In case of further questions, please contact Dr. Andreas Oser, LL.M. (email@example.com)
At the 9th China IP International Annual Forum on January 12, 2019 in Beijing, China, Prüfer & Partner was chosen as one of the four "Most Recommended International Agencies for Chinese Enterprises" by the renowned trade medium China IP Magazine.
Chosen for its character of being an IP boutique with one-stop-shop services and long experience in working for international clients including Brother, Mitsubishi, Trumpf as well as some Chinese client like Xugong Construction Machinery, the jury of the ranking considered Prüfer & Partner to be a good choice for Chinese Enterprises for intellectual property protection.
Prüfer & Partner is very honored with this ranking and would like to take this opportunity to thank all its clients for their trust and the hard work of all its employees, and looks forward to continuously serving its international clients with dedication.
Prüfer & Partner baut ihr Litigation-Team weiter aus: Seit dem 01. Januar 2019 verstärkt Rechtsanwalt Jörg Khöber, LL.M., Fachanwalt für gewerblichen Rechtsschutz, das Rechtsanwaltsteam von Prüfer & Partner. Mit seinem Zugang konnte Prüfer & Partner einen erfahrenen Anwalt gewinnen, dessen Spezialgebiete unter anderem Streitverfahren im gewerblichen Rechtsschutz sowie Strategieberatung im IP-Bereich sind.
Seit 2009 ist Khöber schwerpunktmäßig als Anwalt auf dem Gebiet des Gewerblichen Rechtsschutzes tätig und war in den letzten Jahren für internationale UK-Großkanzleien tätig, zuletzt im Münchner Büro von Pinsent Masons. Er gilt als streiterfahrener Kollege im Patent- und Markenrecht, der sowohl KMUs als auch Global Player berät. So betreute er zuletzt beispielsweise ein DAX Unternehmen aus der Fintech-Branche sowie einige bekannte Modeunternehmen.
Mit diesem Zugang treibt Prüfer & Partner gezielt den Ausbau ihrer rechtsanwaltlichen Litigation Praxis voran. Khöber wird in den Bereichen des Marken- und Patentrechts die bereits von Prüfer & Partner erworbene Marktpräsenz bei streitigen Verfahren weiter ausbauen.
On 14 January 2019, the Trade Mark Law Modernisation Act entered into force in Germany, implementing the EU Trade Mark Directive and further harmonizing European trade mark law.
We have summarized the most important changes to German trade mark law for you as follows:
New types of trade marks
Previously, a trade mark had to be capable of being represented graphically. With the reform, it is sufficient if the trade mark can be clearly and precisely determined. This allows now the filing of applications for sound marks, multimedia marks, holograms and other types of trade marks.
Changes regarding licenses
Now, licenses can be recorded in the register upon request and payment of a fee. Based on the new law, an exclusive licensee has the right to file a law suit against a trade mark infringer if the owner of the licensed trade mark does not file a law suit within a reasonable period of time after being asked by the exclusive licensee. With the reform, the trade mark register becomes a kind of market place, because a non-binding declaration of the trade mark applicant's or owner's willingness to sell or license the trade mark can be recorded in the register. This is similar to the patent register.
Term of protection and renewal of trade marks
So far, the term of protection of a trade mark ended ten years after the month in which the trade mark was applied for. These rules remain in force regarding trade marks already registered before 14 January 2019 so that there is no need for immediate action.
However, the term of protection for those trade marks registered on or after 14 January 2019 will end exactly ten years after the filing date. This will have consequences as of 2029. The application for renewal of a trade mark must be filed and the renewal fee must be paid within a six-month period before the end of the term of protection. The renewal fee can also be paid within an additional period of six months after expiry, but this comes with payment of surcharges.
Trade mark use and grace period for use
With the reform, the practice of German courts becomes law where use of a registered trade mark is also such a use which differs from the registration as long as the difference does not change the distinctive character of the trade mark. Under the reform, the five-year grace period for use will now start on the date after the expiry of the period of opposition against the trade mark. If an opposition has been filed against the trade mark, the grace period for use will start on the date on which the final decision on the opposition is made or the opposition is withdrawn.
Previously, an opposition could only be filed on the basis of one opposing sign. As a consequence, it was common to file several oppositions. After the reform, things are much easier: the owner of several earlier rights can combine them in one opposition filing. And in order to facilitate settlement negotiations between the parties of opposition proceedings, a period of at least two months will be granted upon their joint request to enable the parties to reach a settlement (cooling-off).
Revocation / invalidity proceedings before the German Patent and Trade Mark Office
Starting from May 2020, it will be possible to request a declaration of the German Patent and Trade Mark Office on the revocation of a trade mark due to non-use or to claim invalidity of a trade mark due to absolute grounds of refusal or earlier rights. The Office will also be in charge of the material aspects of these proceedings. However, it will still be possible to file a law suit with the competent courts.
Counterfeits under Customs surveillance
Customs supervision will improve due to the fact that the owner of a trade mark or a commercial designation can prohibit the entry of those goods into Germany that are under Customs surveillance. For such prohibition, it is required that the trade mark or the commercial designation on the goods in transit are identical with or in their main characteristics indistinguishable from the trade mark or commercial designation of the owner.
National certification mark
Since 1 October 2017, a European Union certification mark can be registered with the European Union Intellectual Property Office (EUIPO). Now, the Trade Mark Law Modernisation Act introduces the certification mark to German trade mark law. By way of this certification mark, the owner certifies in respect of goods or services at least one of the following characteristics: material, mode of manufacture of goods or of performance of services, quality, accuracy or other characteristics except the geographical origin.
If you have questions or considerations on how the changes of the law will impact your trade mark portfolio or your trade mark strategy, we are pleased to be of service to you.
In the annual edition "The Legal 500 Deutschland 2019" the international research agency The Legal 500 mentioned Prüfer & Partner among Germany's leading law firms for the protection of industrial property rights in the field of patent law: application and prosecution, as extremely commendable.
Prüfer & Partner ranks among the "most recommendable patent law firms in Germany", convinces with "excellent service" and is thus one of the most renowned patent law firms in Germany.
Prüfer & Partner is very pleased about this award and would like to thank all its clients, foreign colleagues and employees for the trust they have placed in its firm and for the good cooperation.
The international research agency The Legal 500 has been dealing with the recommendations of law firms since 1987. To analyse the international legal market, the editorial team interviews over 300,000 lawyers worldwide every year. Today, The Legal 500 is recognised as the world's most authoritative legal guide.