In 2023, we talked about how the EPO could offer a helping hand to start-ups by enabling an application to rely on post-filed data in order to support the plausibility of the patent application. In short, G2/21 provides assistance to start-ups, for instance, by setting out that data which emerges after filing may be used to support the patent application.
In this note, we look at how the EPO is applying G2/21, and the application of those guidelines to artificial intelligence (AI) patent applications
Applying plausibility to AI inventions
Plausibility sits at the interface of inventive step and sufficiency, as it relates to whether what is described in the patent application (i.e. the instructions to the skilled person) can be used to support a technical effect (i.e. can it support inventive step) and so any examination of case law in this area requires a look at how G2/21 is being used in matters related to inventive step and sufficiency, individually or in combination.
Plausibility often arises in life sciences-focused applications, and for that reason, we cannot apply the lessons of the case law directly to AI matters but rather extract the teachings of those cases and look to see what we can derive from the decisions.
Examples of plausibility in case law
In T873/21, the inventive step of a patent application which related to the treatment of metabolic disorders in equines (horses, ponies, zebras etc.) was assessed. Plausibility arose as a question in the assessment of the inventive step as it needed to be examined whether a technical effect (improved insulin sensitivity) was plausible at the priority date. The plausibility was acknowledged in view of the known effects of the claimed agents individually and the mention of improved sensitivity in the original description.
In T166/21, a patent application related to maintaining or increasing weight in a mammal (e.g. a human being) was examined in the context of sufficiency. The EPO rejected the patent application as insufficiently disclosed as the EPO concluded there were serious doubts substantiated by "verifiable facts" as to whether the claimed components could be suitable for maintaining or increasing body weight in an elderly human about 65 years of age.
In T1551/22, a patent application related to a cosmetic composition preparation process was examined in the context of inventive step and whether post-filed data can be used to support the presence of a technical effect. The criteria set forth in G2/21 were deemed to have been met as the technical effect described in the patent application (rapid foaming) was derivable based on the application as originally filed and also embodied by specific examples in the originally disclosed invention.
Lessons learned from G2/21 – how is it being applied?
Only time will tell whether any of the decisions will take on special significance, especially where AI focused applications are concerned, but we can take some lessons from how G2/21 has been applied so far. The decisions we have examined above tell us that it is a good idea to ensure the following is provided by patent applications as filed:
- Technical effects are at least mentioned in the original description;
- Technical effects cannot be doubted based on verifiable facts, i.e. there is no point in trying to bluff inventive step; and
- Technical effects can be embodied by specific examples in the originally disclosed application.
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