By Ana Herrera, Director of Patents, Technological Development and Innovation | European Patent Attorney at PONS IP
On 23 March 2023, the Enlarged Board of Appeal (EBOA) of the European Patent Office (EPO) issued decision G 2/21, addressing the issue of “plausibility” in the context of inventive step in European patent applications. This decision is particularly significant because it establishes the criteria for the admissibility of experimental evidence provided by the applicant or owner after the application date of the patent when the requirement of inventive step is being discussed.
Traditionally, during the patent granting process, it is very common for applicants to provide additional experimental data after the application has been filed in response to an inventive step objection to support the existence of the inventive step. However, the acceptance of this additional evidence varies according to the jurisdiction and the technical area, and depending on whether or not the technical effect associated with the results shown was explicitly disclosed in the original application or, at least, could be deduced by a skilled person.
Decision G 2/21 arose from a referral from the Technical Board of Appeal in case T 116/18, which raised questions about the admissibility of evidence submitted to the EPO after the filing of the patent application (which is known in patent jargon as post-published evidence) when the technical effect was not explicitly disclosed in the original application but could be considered plausible by a skilled person in the light of the specification as filed and of the skilled person’s common general knowledge.
In its ruling, the EBOA established, firstly, that evidence submitted after the filing date of the application cannot be rejected solely on the grounds that it had not been made public before said date. Furthermore, it was determined that a patent applicant or proprietor may rely upon a technical effect that was not explicitly described in the patent application to demonstrate inventive step if a skilled person, having the common general knowledge in mind and based on the application as originally filed, would derive said technical effect as being encompassed by the technical teaching of the patent application. In relation to the latter, it is interesting to note that the EBOA has gone further, adding and clarifying that the technical effect can be considered to have been encompassed by the teaching of the patent application as originally filed even if that effect was only “conceptually encompassed” by the general technical teaching of the originally disclosed invention. Therefore, the EBOA suggests that it is not necessary for there to be a literal description in the application as filed of the alleged technical effect, but that it may be sufficient for the skilled person, relying upon common general knowledge and the description of the patent application, to recognise that the effect was encompassed by the original teaching of the invention.
Furthermore, for the admissibility of the evidence submitted a posteriori, it must be assessed whether the skilled person, again relying upon their common general knowledge and the original description of the patent application, would conclude not only that the definition of the technical effect was at least conceptually encompassed by the application as originally filed, but also that achieving it was “plausible”. That is, the patent application as originally filed may not contain any experimental evidence to show that the intended technical effect was actually achieved, but in that case the question of whether the skilled person would have reasonable doubts as to whether that intended technical effect could be achieved with the claimed subject matter must be answered. If the answer is yes, that is to say, that such doubts could exist, then the evidence subsequently submitted to defend the inventive step based on the achievement of said technical effect should not be admitted.
It is important to emphasise that the EBOA clarified that “plausibility” does not constitute a new patentability requirement, but rather a criterion used to evaluate whether or not an intended technical effect can be invoked in order to obtain a favourable opinion in relation to inventive step. This concept is therefore included within the patentability requirements, such as novelty, inventive step, industrial application and sufficiency of description.
Therefore, this decision G 2/21 seems to establish two relevant criteria for evaluating the admissibility of this evidence that the applicant submits after the application date of the patent, either during the examination process or during an opposition, in order to defend himself against an inventive step objection. Said criteria are, on the one hand, that the technical effect shown by those results that are being submitted after the filing, although it may not be explicitly indicated in the application, must at least be conceptually encompassed by the original general teaching of the patent application and, on the other hand, that from the information contained in the patent application as originally filed it must be derived that said effect (result) that is being demonstrated solely with this additional evidence was plausible and, therefore, the skilled person would have no doubts about its viability.
With the introduction and clarification of these criteria, the EPO restricts or, at the very least, normalises the possibility that inventions may be granted patents that, when they were drafted, had not really been tested in terms of their technical effect and therefore could be considered “theoretical or prophetic inventions”, since through this decision, at the very least, it obliges the initial drafting of the application to include information or data that minimally allows the skilled person to derive what the intended technical effects could be and that achieving them is plausible.
This decision reaffirms the EPO’s position on the admissibility of evidence submitted later to support inventive step, establishes the criteria to be taken into account and, perhaps, could influence practices in other jurisdictions with more restrictive approaches to the acceptance of this type of evidence.
