Article 53(b) EPC: A Challenge to the Novartis Theory of European Patent History
| Date | 01 May 2009 |
| Published date | 01 May 2009 |
| DOI | http://doi.org/10.1111/j.1468-2230.2009.00753.x |
ginally, of proper understanding, and latterly, of properengagement.The success
of the UK’s Climate Change Act must ultimately be measured against its capacity
to foster social learningand produce adequate responses which in turn encourage,
it must be hoped, like approaches elsewhere.
Article 53(b) EPC: A Challenge to the Novar tis Theory of
European Patent History
Justine Pila
n
The authoritative (Novartis/transgenicplant systems) interpretation of the Article 53(b) EPC exclu-
sion from European patentability of plant and animal varieties, and essentially biological pro-
cesses for the creation of plants and animals, is considered, and its signi¢cance for the trend of
EPO jurisprudence and legitimacy of the EC Biotechnology Patenting Directive noted. The
Enlarged Board of Appeal’s justi¢cation for that interpretation in Novar tis with reference to the
exclusion’s legislative history is challenged, and an alternative theory of that history proposed,
based on a thorough analysis of the u npublished travaux pre
Łparatoires for the Strasbourg and Eur-
opean Patent Conventions. In addition to elucidating the framers’(actual a ndpresumed) intent
with respect to the Article 53(b)exclusion, that analysis o¡ers an insight into post-war legal uni-
¢cation methodology and its continued impact on one of the most contentious a nd technical
areas of intellectual property law.
INTRODUCTION
European and Community patents
Since the1960s, patent law in Europe has been largely harmonized. The principal
instruments of that harmonization have been the Convention on the Uni¢cation
of Certain Aspects of Substantive Law on Patents for Inventions (Strasbourg
Convention), and the Convention on the Grant of European Patents (European
Patent Convention). Signedi n1963 and 1973 respectively, those Conventions were
the result of extensive work undertaken over a 22-year period by two expert
committees andtwo diplomatic conferences: the Council of Europe’s Committee
of Experts on Patents (1951 to1969); the EEC PatentsWorkingParty (1961 to1964);
the Inter-GovernmentalConference for the Setting Up of a European System for
n
University Lectureri n Intellectual Property, Universityof OxfordFaculty of Law; Fellowa ndTutor
in Law, St Catherine’s College, Oxford; Senior Research Associate (and Interim Director), Oxford
Intellectual Property Research Centre.I am grateful to David Brennan for his valuable comments on
an earlier draft, and tothe a nonymous referees for their comments as well. Inthi s article,‘Committee
of Experts’refers to the Council of Europe’s Committee of Experts on Patents, ‘PWP’ refers to the
EEC PatentsWorking Party (1960^1965), and document references are to documents of the Council
of Europe unless otherwise indicated.
Article 53(b) EPC
436 r2009 The Authors. Journal Compilation r2009 The Modern Law ReviewLimited.
(2009) 72(3) 412^462
the Grant of Patents (Luxembourg Conference) (1969 to 1972); and the Munich
Conference (1973) at which the European Patent Convention was signed.
The purpose of the Strasbourg Convention (SPC) is to establish certain foun-
dationalprinciples of European patentability. ByArticle1, forexample, Contract-
ing States are required to grant patents‘forany inventionswhich are susceptible of
industrial application, which are newand which involve an inventive step’,a ndto
deny patents for inventions not satisfying those conditions. ByArticle 2 they are
permitted to recognise certain limited exclusions from patentability, including
for plant and animal varieties, and essentially biological processes for the produc-
tion of plants and animals.
Articles 1and 2 of the SPC provide the departure point for the principles of sub-
stantive law contained in the more ambitious European Patent Convention (EPC).
The purpose of that Convention is to establish ‘a system of law, common to the
Contracting States,for the grant of patents for inventions’ (Article 1) and an organi-
zation, the European Patent Organization (EPO), to administer it. A patentgranted
under the EPC is called a European patent, but takes e¡ect as a bundle of national
patents under the laws of the Contracti ng States i nwhich protection is sought. The
conditions of the grant of such a European patent are contained in Articles 52 to 57,
and include an exclusion frompatentability in substantially the same terms as those
permitted by Article 2 of the SPC, including one covering plant and animal vari-
eties, and essentially biological processes for the production of plants and animals.
At present there is no Communityor other unitarypatent in Europe.There is
however a strong commitment within the EC to creating one, and to achieving
more generally a closer harmonization of European patent laws than is possible
with a supra-national, pre-grant system suchas the EPC. Still, thegoal of a Com-
munity patent seems a distanceaway, notwithstanding considerableinvestmentof
time and resources, and signi¢cant legislative achievements as well, including the
conclusion of the Community Patent Convention of 1975, the Agreement relat-
ing to Community Patents, the Council Regulation on the Community Patent
(COM (2000) 412 ¢nal), and various related instruments and proposals.
1
Directive 9 8/44/EC on the protectionof biotechnological inventions
One such related instrument is Directive 98/44/EC on the protection of biotech-
nological inventions.
2
Created in1998 after a ten-year legislative passage mired in
controversy, the aim of the Directive was toharmonise European laws relating to
biotechnology patenting. As is the way with EC Directives, various reasons were
given for that aim, including the need to promote the internal market by clarify-
ing existing legal uncertainty.
3
In the case of the Biotech Directive, an important
1 89/695/EEC Agreement Relating to Community Patents [1989] OJ L401/1. The related instruc-
tions and proposals include the Patent Litigation Protocol, the Common Appeal Court Statute,
the Common Appeal Court Privileges Protocol, and the Working Document of 14 May 2008
submitted by the Council Presidency to theWorking Party on Intellectual Property (Patents)
on the subject of a Draft Agreement on the European Patent Judiciary.
2 Directive 98/44/EC of the European Parliament and of the Council of 6 July 1998 on the legal
protection of biotechnologicali nventions, (1998)OJ L213/13.
Justine Pila
437
r2009 The Author.Journal Compilation r200 9 The Modern LawReview Limited.
(2009) 72(3) 412^462
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