ARTICLE
2 November 2021

Written Decision Referring Questions Concerning The Doctrine Of Plausibility To The Enlarged Board Of Appeal In G2/21 Now Available

JA
J A Kemp LLP

Contributor

J A Kemp is a leading firm of European Patent and Trade Mark Attorneys. We combine independent thinking with collective excellence in all that we do. The technical and legal knowledge that we apply to the protection of our clients’ patents is outstanding in its breadth and depth. With around 100 science and technology graduates in the firm, including 50 PhDs, no area of science or technology is outside our scope. Our Patent Attorneys have collective in-depth expertise in patent law and procedure in every country of the world. The team of professionals who advise our clients on trade mark and design matters have backgrounds in major international law firms and hold qualifications as Chartered UK Trade Mark Attorneys, Solicitors and European Trade Mark Professional Representatives. Dedicated to this specialist area of intellectual property protection, the team has the expertise and resources to protect trade marks and designs in any market worldwide.
We reported in August 2021 that the EPO's Enlarged Board of Appeal (EBA) would be considering the doctrine of plausibility at the EPO.
United Kingdom Intellectual Property

We reported in August 2021 that the EPO's Enlarged Board of Appeal (EBA) would be considering the doctrine of plausibility at the EPO. The written decision of Board of Appeal making the referral is now available (see here), and the referral has been assigned the number G2/21. The final questions referred to the EBA are as follows:

"If for acknowledgement of inventive step the patent proprietor relies on a technical effect and has submitted evidence, such as experimental data, to prove such an effect, this evidence not having been public before the filing date of the patent in suit and having been filed after that date (post-published evidence):

  1. Should an exception to the principle of free evaluation of evidence (see e.g. G 3/97, Reasons 5, and G 1/12, Reasons 31) be accepted in that post-published evidence must be disregarded on the ground that the proof of the effect rests exclusively on the post-published evidence?
  2. If the answer is yes (the post-published evidence must be disregarded if the proof of the effect rests exclusively on this evidence), can the post-published evidence be taken into consideration if, based on the information in the patent application in suit or the common general knowledge, the skilled person at the filing date of the patent application in suit would have considered the effect plausible (ab initio plausibility)?
  3. If the answer to the first question is yes (the post-published evidence must be disregarded if the proof of the effect rests exclusively on this evidence), can the post-published evidence be taken into consideration if, based on the information in the patent application in suit or the common general knowledge, the skilled person at the filing date of the patent application in suit would have seen no reason to consider the effect implausible (ab initio implausibility)?"

We await the decision of the EBA with interest. In the meantime, you can find J A Kemp Partner Ravi Srinivasan's thoughts on this important area of the law here.

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