“EPO’s Enlarged Board of Appeal Confirms Requirement for Plausibility in Patent Applications”
European Patent Office’s Enlarged Board of Appeal Confirms Established Case Law in G 2/21 Judgment
The European Patent Office’s (EPO) Enlarged Board of Appeal (EBA) has confirmed in its G 2/21 judgment that for examiners to consider data submitted after filing a patent, it must be plausible from the application as filed, in combination with common general knowledge, that the technical effect was already achieved at the date on which the patent was filed. This decision is based on the principle of free evaluation.
Implications of the G 2/21 Judgment
The EBA’s ruling clarifies that patent examiners cannot disregard 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 solely because such evidence was not public before the filing date of the patent and was filed after that date.
This means that the EPO cannot reject a patent application simply because the data was not available at the time of the patent application. Going forward, examination divisions and the Opposition Division will need to closely scrutinize the data and decide on a case-by-case basis when a technical effect is plausible and when it is not.
The G 2/21 Case: A Dispute Over Insecticide Composition
The G 2/21 case was based on a dispute between Sumitomo Chemical and Syngenta over an opposition against Sumitomo’s EP 2 484 209 patent, which protects insecticide compositions involving a combination of compounds. Syngenta had claimed that the patent lacked inventive step.
After the Opposition Division rejected the opposition in 2017, Syngenta filed an appeal in autumn 2020. The Board of Appeal stated that the question of inventive step depended on whether post-published data that supports the technical effect, upon which the patent owner relied, was admissible.
Plausibility: Not a Legal Concept
The EBA also considered that the term “plausibility” did not amount to a distinctive legal concept or a specific patent law requirement under the European Patent Convention (EPC). Instead, the EBA considered that “it rather describes a generic catchword seized in the jurisprudence.” This correlates to the second point of the EBA’s ruling.
The decision has been awaited for several months and could have implications for parties filing second medical use patents, where the question of plausibility often plays a big role. According to G 2/21, even stricter standards apply to these than to other patent applications.
Representation of Parties
Sumitomo has relied on the German patent law firm Winter Brandl for filing and prosecution, including for the patent-in-suit. Syngenta is a long-standing client of UK patent law firm HGF, which has offices in the UK, Ireland, France, Switzerland, the Netherlands, Germany, and Austria.
Conclusion
The G 2/21 judgment by the EPO’s Enlarged Board of Appeal is a significant development in patent law. It clarifies the requirements for considering post-filed evidence and the concept of plausibility in the context of patent applications. This decision will have far-reaching implications for patent applicants and proprietors, particularly those filing second medical use patents.