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”. For a detailed digest of G 2/21, including practical tips for applicants and attorneys, as well as a comprehensive review of the case law in this field, please see our three-part article series here:
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:
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“ab initio plausibility” (or “plausibility to be proven” at filing, a high bar);
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“ab initio implausibility” (or “plausibility is assumed” at filing, a medium bar); and
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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.
For more information please contact Nick Lee, James Snaith, Joseph Etherington, or your usual Kilburn & Strode advisor.