EPO Enlarged Board of Appeal addresses the notion of plausibility

Managing IP is part of Legal Benchmarking Limited, 1-2 Paris Gardens, London, SE1 8ND

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

EPO Enlarged Board of Appeal addresses the notion of plausibility

Sponsored by

inspicos-400px recrop.jpg
folders-7382940.jpg

Jakob Pade Frederiksen of Inspicos explains a ruling on the acceptance of evidence that is made public after the filing of an application to prove a technical effect

In its most recent decision, G 2/21 of March 23 2023, the Enlarged Board of Appeal of the EPO considered fundamental questions in relation to the assessment of non-obviousness, notably on the principle of free evaluation of evidence and the notion of plausibility.

For the assessment of non-obviousness, the EPO generally applies the so-called problem-solution approach, in the context of which the technical effect brought about by the decisive novel feature(s) of the claim in question is to be defined. Often, when arguing in support of an inventive step, applicants for, or proprietors of, European patents attempt to rely on a technical effect which is not disclosed in the application as filed, but which may be apparent on the basis of post-published evidence; i.e., evidence published after the filing date.

According to the Enlarged Board of Appeal, such evidence may not be disregarded for the sole reason that it was not available to the public before the filing date. However, the Enlarged Board of Appeal expressed in its decision that it is decisive what the skilled person would understand at the filing date from the application as being the technical teaching of the claimed invention. Furthermore, the technical effect relied upon in relation to non-obviousness must be encompassed by that technical teaching.

Thus, according to the Enlarged Board of Appeal, evidence filed to prove a technical effect of the claimed subject matter may not be disregarded solely on the ground that such evidence had not been public before the filing date and was filed after that date. Also, a patent applicant or proprietor may rely upon a technical effect for an 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.

G 2/21 underlines the necessity for applicants to include a discussion of the technical effects of the invention, and possibly data supporting such effects, in their applications from the outset.

more from across site and SHARED ros bottom lb

More from across our site

Niri Shan, the newly appointed head of IP for UK, Ireland and the Middle East, explains why the firm’s international setup has brought UPC success, and addresses German partner departures
Vlad Stanese joins our ‘Five minutes with’ series to discuss potentially precedent-setting trademark and copyright cases and his love for aviation
Heath Hoglund, president of Via LA, discusses how it sets royalty rates and its plans to build on growth in China
Stobbs stands accused of interfering with the administration of justice after Brandsmiths’ client was subjected to an interim injunction for unjustified threats
The firm, known for its prosecution expertise, discusses its plans following the appointment of a UK-based patent litigation head and two new partners
Ed White at Clarivate provides an exclusive insight into the innovation power clusters reshaping Europe and the Middle East’s IP landscape, and why quality is the new currency of invention
In the first in a new podcast series celebrating the tenth anniversary of IP Inclusive, we look back at the network’s origins and discuss its mission
Rebecca Schwarz at Haynes Boone shares how her team secured victory for biopharma client RedHill in a licensing dispute involving a developmental cancer drug
News of a breakaway firm launching in Germany and a spike in vaccine-related patent applications were also among the top talking points
A flurry of hiring activity among UK firms suggests they are confident of mounting a serious challenge at the UPC
Gift this article