Preliminary, non-binding opinion on the pending G 2/21 referral on plausibility

The EPO Enlarged Board of Appeal (EBA) has issued a preliminary, non-binding opinion on the pending G 2/21 referral on plausibility.  The final decision in this referral has the potential to either lower or increase the plausibility requirement in EPO inventive step analysis. In its preliminary opinion, the EBA hints at accepting a standard of lack of ab initio implausibility for a technical effect supporting inventive step.

The EPO’s Boards of Appeal had referred the following three questions to the EBA in the referral G2/21 to clarify whether a technical effect can be relied on when evidence for the effect rests solely in post-published data and what role, if any, plausibility should play in this assessment:

  1. Must post-filed data be disregarded if the proof of a technical effect rests exclusively on those data?
  2. If yes to Q1, can post-filed data be taken into account if the effect is plausible from the application as filed (ab initio plausibility)?
  3. If yes to Q1, can post-filed data be taken into account if the effect is not implausible from the application as filed (ab initio lack of implausibility)?

Concerning question 1, the EBA comments that disregarding post-filed data as a matter of principle would deprive a party of submitting and relying on such evidence which is a basic legal procedural right. For the EBA, post-filed evidence should therefore not be disregarded. The EBA, therefore, answers “no” to Question 1.

Concerning questions 2 and 3, the EBA has indicated that they favour the “ab initio lack of 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. 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). In the lack of any substantiated doubts, the EBA see no reason why post-filed evidence should not be considered relevant to the question.

This is potentially good news for applicants and attorneys who were concerned that the EBA may favour the stricter “ab initio plausibility” standard. However, the EBA’s position may still change during the upcoming oral proceedings on Nov 24, 2022. Innovators in the life sciences sector would be encouraged by the above due to the often-significant challenges of obtaining conclusive evidence at an early stage in the product development cycle.

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