This browser is not actively supported anymore. For the best passle experience, we strongly recommend you upgrade your browser.
| less than a minute read

G2/21: what does the skilled person understand from the disclosure of the patent?

In this decision, it seems that the Enlarged Board suggest that the fundamental test regarding inventive step and the assessment of post-filing evidence is to ask “what does the skilled person understand from the disclosure of the patent?” In my view, this should also be seen as the fundamental question for many different patent issues. That is, in determining novelty, inventive step, sufficiency, added matter, and infringement, it is necessary to ask the same question.

However, as the Enlarged Board acknowledge in their decision, this is a very abstract consideration, and so may not in isolation be a very helpful question to ask. Which (again, in my view) is why over time the patent office developed various more structured tests designed to help answer the apparently simple question.

So although this decision may be seen in some respects as stripping the question of plausibility back to basics, I suspect that in a few more years we will be applying new and different tests developed on top of this Enlarged Board decision.

To read additional comments on this topic from my colleague Jonathan Stafford, click here.

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.


patents, chemistry, life sciences