It is common to say that you learn to howl when you walk with wolves. It seems that this old saying applies to Patent Examiners in charge of evaluating inventiveness and of innovating in examination processes. Recently, the concept "plausibility" began to swipe up in many prosecution stories.
In general terms, plausibility could be understood as a patentability condition that addresses the question of whether there is sufficient evidence, technical knowledge in the state of the art and in the teaching of the disclosure of the invention to conclude that the technical problem can indeed be solved by the proposed technical solution.
The term "plausibility", in the context of patentability assessment, was first introduced in the decision of the Board of Appeals of the European Patent Office: T1329/04, Factor-9/JOHN HOPKINS of June 28, 2005.
In a nutshell, in that decision it was questioned whether the problem to be solved, defined as isolating a further member of the TGF-Beta (Transforming Growth Factor-Beta) superfamily, had been plausibly solved considering the teachings of the application and the state of the art at the priority date.
In this case, the subject matter was TGF-9, a specific member of the TGF-Beta superfamily. The description of the application did not exhibit the structural feature that serves to establish whether a polypeptide belongs to the TGF-Beta family: that is, the seven cysteine residues with their characteristic spacing. In fact, only six cysteine residues were present.
At the priority date, there was no available evidence to show that the claimed compound was actually a growth differentiation factor. It was then a "speculation" that this property was given.
Therefore, the credibility of the development was doubtful, it was concluded that there was not enough evidence in the application to make "at least plausible" that a solution to the technical problem was found, the inventive step requirement was not satisfied, and that appeal was dismissed.
Another relevant precedent is found in the Canadian patent law. In this jurisdiction, the utility requirement of a claimed invention must be demonstrated or at least "soundly predicted". For a prediction to be considered "sound", it must meet the following conditions:
There must be a factual basis for the prediction;
The inventor must have at the date of the patent application an articulable and "sound" line of reasoning from which the desired result can be inferred from the factual basis; and
There must be a proper disclosure.
Therefore, the prediction must not be speculative and, consequently, it must be credible or plausible.
Plausibility as an additional patentability requirement
After analyzing this trend, it has been questioned whether plausibility should be considered and regulated as an additional patentability requirement, with the faculties to stand alone from the traditional concepts of novelty, inventive step, sufficiency, clarity, utility and industrial applicability.
With the entry into force in September 2012 of the Leahy-Smith America Invents Act in the USA, the patent system in America was finally homologated to the international patent system provision "first to file" over the "first to invent" protection. Essentially, patent rights are granted to the first inventor to file a patent application claiming the patentable invention.
As an obvious result of this new scenario, researchers and developers tend to accelerate investigation protocols to ensure a priority date. If the process is accelerated too much, the teachings on patent applications may become speculative and the embodiments or examples could be more prophetic than factual.
In some cases, the relationship between the evaluation of the inventive step and the assessment of the plausibility could be dangerously close. However, it is important to keep in mind that if an expert finds a technical effect plausible, the invention does not necessarily lack of inventive step. To conclude there is plausibility, the teachings of the patent application or patent are taken into account. These teachings could be taken out of the analysis when evaluating inventive step.
The current scenario in Mexico is that the law requires the disclosure of the best-known method to develop the invention and that the description and claims must be clear. In practice, the Mexican examiners object plausibility issues by requesting clarifications of the subject matter and the proposed solution to the technical problem.
Considering the different criteria for currently evaluating the concept of plausibility, the difficulty of developing clear guidelines to establish the degree of credibility to conclude that an invention is plausible, the practice around the "first to file" provision and, finally, the collision of the concept with other patentability requirements, it must be concluded that plausibility should not be considered as an independent patentability condition.
This article was published on BC&B Newsletter page on September 26th, 2019 which can be accessed at: https://www.bcb.com.mx/publicacion/?p=Requisito-de-Patentabilidad
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