The EPO Enlarged Board of Appeal (EBA) has issued a preliminary, non-binding opinion on the
pending G 2/21 referral.
In brief: G 2/21 (introduced in our previous
articles here and here) asks how the EPO should deal with
admissibility of post-filed data and the overall patentability
concept of "plausibility".
The referring Technical Board of Appeal (TBA) in G 2/21 identified
three distinct plausibility standards (when considering inventive
step) of varying strictness. These were:
- "ab initio plausibility" (or "plausibility to be proven" at filing, a high bar);
- "ab initio implausibility" (or "plausibility is assumed" at filing, a medium bar); and
- no plausibility (a low bar).
The preliminary, non-binding, opinion gives an indication of the
EBA's initial view on the topic, but the legal standard to be
adopted is still open for debate at the upcoming oral proceedings
(scheduled for 24 November 2022).
The EBA has indicated that they favour the "ab
initio implausibility" standard. This generally
allows post-filed data into proceedings to support an alleged
technical effect/advantage, even if such an effect/advantage was
not made plausible in the application as filed. However, post-filed
data would not be allowed into proceedings if a skilled
person would have had a significant reason to doubt the technical
effect/advantage at the time of filing (i.e. the technical
effect/advantage would be considered implausible, e.g.
from prior art).
The EBA said: "[i]n the absence of any such doubts, the
reliance on post-published evidence, such as experimental data, for
the purported technical effect would seem to serve as a potential
source for a deciding body to conclude whether or not it is
convinced of said technical effect when deciding on the
inventiveness of the claimed subject-matter" (paragraph 17 of
the preliminary opinion).
This is potentially good news for applicants and attorneys who were
concerned the EBA may favour the stricter "ab initio
plausibility" standard. However, the EBA's position may
still change during the upcoming oral proceedings.
We're closely monitoring developments: we'll report further
as G 2/21 progresses and the legal landscape becomes clearer. We
will soon be publishing an extended three-part article on G 2/21
and the concept of plausibility in more detail (including a useful
guide for applicants and attorneys) – look out for this in
the coming weeks.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.