Patent prosecution at the European Patent Office: what is new for life sciences applicants?

Abstract

During the last couple of years, the European Patent Office (EPO) has gradually implemented the so-called ‘Raising the Bar’ initiative, which is aimed at improving the quality of European patents and, in combination with speeding up the procedure for grant, reducing uncertainty for third parties. As a part of this initiative, a series of changes to the implementing regulations of the European Patent Convention (EPC) were introduced last year. Applicants now need to be sure of their position with regard to supportive experimental data and a thorough argumentation at an earlier stage in the prosecution of a patent application. When evaluating the criteria of inventive step (Art 56 EPC) and sufficiency of disclosure (Art 83 EPC), the EPO frequently refers to two decisions issued by the Boards of Appeal. These decisions are also used to determine whether it is appropriate to further support a disclosed technical effect or a scope of protection with experimental data produced after the date of filing of the patent application. In view of recent case law, it is evident that applicants cannot rely on post-filed experimental data as the only evidence for a technical effect or a certain scope of protection claimed in the application.

Keywords::

• Article 56 EPC
• Article 83 EPC
• experimental data
• life sciences
• plausibility
• Raising the Bar initiative
• sufficiency of disclosure
• T1329/04
• T609/02
• technical effect