IP Cases & Articles

EPO stays proceedings in light of questions referred to the Enlarged Board of Appeal in G 2/21

As we reported in early November 2021, three questions concerning how strictly the EPO’s “plausibility” standard should be applied have been formally referred to the Enlarged Board of Appeal under case G 2/21.

Summary of T 116/18 and questions referred to the Enlarged Board of Appeal

“G 2/21: questions on the correct plausibility standard referred to the Enlarged Board of Appeal”: Khalil Davis, 11 November 2021.

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The EPO has now issued a notice that in light of this pending referral before the Enlarged Board of Appeal, all examination and opposition proceedings before the EPO in which the decision depends entirely on the outcome of the referral will be stayed until the Enlarged Board of Appeal has issued its decision. The notice clarifies that only cases where the assessment of inventive step is exclusively based on evidence which was not publicly available before the filing date of the patent application (so called “post-published evidence”) will be stayed.

It is not yet clear how strictly and at what point during proceedings the above criteria for staying a particular case will be applied. In particular, for complex opposition proceedings it appears that it may be difficult for the Opposition Division to reach the conclusion that the assessment of inventive step is based “exclusively” on post-published evidence, or that the decision depends “entirely” on the outcome of the referral, without hearing the arguments of all parties during oral proceedings.

The apparent limitation of the stays to cases only where the assessment of inventive step, and not sufficiency, is at issue is also notable, given that the questions referred to the Enlarged Board in G 2/21 make no such distinction between the plausibility standard required for inventive step and sufficiency. Indeed, the referring Board of Appeal in T 116/18 noted in its decision that whether plausibility of a technical effect is assessed under inventive step or sufficiency of disclosure depends on whether the alleged technical effect is a feature of the claim or not and explicitly considered that the standard of plausibility should be the same for the assessment of both inventive step and sufficiency (T 116/18, reasons, 9 and 13.3.1). It therefore remains to be seen whether the stay will be applied only to decisions concerning inventive step, or whether Examining and Opposition Divisions will interpret the notice as meaning cases where the plausibility of a technical effect that is a feature of a claim and is thus considered under sufficiency can also be stayed.

We will of course keep you updated with any future developments as they arise.

EPO notice of 23 November 2021

Notice from the European Patent Office dated 23 November 2021 concerning the staying of proceedings due to referral G 2/21.

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