G2/21 – Plausibility
The Enlarged Board of Appeal of the EPO have issued a decision, G 2/21, on plausibility. The Enlarged Board of Appeal has confirmed the established practice that post-published evidence may be considered to support a technical effect for inventive step. However, the technical effect must be derived from the application as filed. Of note, this does not require the technical effect to be explicitly disclosed in the application as filed. This leaves open the possibility of applicants and proprietors using post-published evidence to support a technical effect derivable from, but not explicitly disclosed in the application as filed. The Board of Appeal confirmed that the term “plausibility” does not amount to a distinctive legal concept or a specific patent law requirement under the EPC. The concept of a skilled person and their understanding of the application as filed remains key to considering inventive step.
The order issued reads as follows:
1. Evidence submitted by a patent applicant or proprietor to prove a technical effect relied upon for acknowledgement of inventive step of the claimed subject-matter may not be disregarded solely on the ground that such evidence, on which the effect rests, had not been public before the filing date of the patent in suit and was filed after that date.
2. A patent applicant or proprietor may rely upon a technical effect for inventive step if the skilled person, having the common general knowledge in mind, and based on the application as originally filed, would derive said effect as being encompassed by the technical teaching and embodied by the same originally disclosed invention.