In comes G2/21, out goes plausibility

EPO patent practitioners (especially those in chemistry and life sciences) can stop holding their breath because the long awaited EPO Enlarged Board of Appeal decision G2/21 “Plausibility” has been handed down.

A more thorough consideration and commentary on the practical consequences of the decision will follow, but it looks like “plausibility” in the historical EPO sense is to become a concept of the past.

The Enlarged Board has indicated that “The relevant standard for the reliance on a purported technical effect when assessing whether or not the claimed subject-matter involves an inventive step concerns the question of what the skilled person, with the common general knowledge in mind, would understand at the filing date from the application as originally filed as the technical teaching of the claimed invention. The technical effect relied upon, even at a later stage, needs to be encompassed by that technical teaching and to embody the same invention, because such an effect does not change the nature of the claimed invention…Hence, 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 consider said effect as being encompassed by the technical teaching and embodied by the same originally disclosed invention.”

Patent practitioners will be poring over the decision and no doubt debating what it means for a technical effect to be “encompassed by the technical teaching and embodied by the same originally disclosed invention” as well as waiting to see how the referring Board will use these criteria to decide originating case T116/18. Probably some similar principles will apply as for assessing plausibility previously, but it seems clear that change is afoot.

To read additional comments on this topic from my colleague Gareth Williams, click here.