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

Howard Hogan, IP partner at Gibson Dunn, says AI deepfakes are driving lawyers to rethink how IP protects creativity and innovation
Vivien Chan joins us for our ‘Women in IP’ series to discuss gender bias in the legal profession and why the business model followed by law firms leaves little room for women leaders
Partner Jeremy Hertzog explains how his team worked through a huge amount of disclosure from Adidas and what victory means for the firm
Evarist Kameja and Hadija Juma at Bowmans explain why a new law in Tanzania marks a significant shift in IP enforcement
In the wake of controversy surrounding Banksy’s recent London mural, AJ Park’s Thomas Huthwaite and Eloise Calder delve into the challenges street artists face in protecting their works and rights
Alex Levkin, founder of IPNote, discusses reshaping the filing industry through legal tech, and why practitioners’ advice should stretch beyond immediate legal needs
Cohausz & Florack, together with Krieger Mes & Graf von der Groeben, has taken action against Amazon on behalf of three VIA LA licensors
In the fourth episode of a podcast series celebrating the tenth anniversary of IP Inclusive, we discuss unconscious bias in the IP workplace and how to address it
Greg Munt, who has moved from Griffith Hack to James & Wells after four decades, hails his new firm’s approach to client service
Practitioners warn that closing the Denver regional office could trigger a domino effect, threatening local innovation and access to IP resources
Gift this article