What is the future of plausibility? AIPPI country survey results suggest plausibility requirement "undesirable"

With the 2019 AIPPI World Congress set to kick off in London in only a few weeks, it is a good time to consider some of the topics that are due to be debated at this year's Congress.  One of the likely most contentious topics is that of plausibility and the thorny question of whether there is even a place in patent law for a plausibility requirement. Andrew Wells (Herbert Smith)- one of the winner's of this year's UK Group's study questions for his contribution on the plausibility question  - reports on the results from this year's country reports. 

Over to Andrew:

"What is AIPPI and how do the study questions work?
As many readers will know, the International Association for the Protection of Intellectual Property (a.k.a. AIPPI) is a global organization "dedicated to the development and improvement of laws for the protection of intellectual property". It has over 9000 Members representing more than 125 countries and dates back to 1897.

AIPPI holds a World Congress each autumn, which is open to all of its members. In advance of the Congress, AIPPI sets study questions concerning four topical issues of intellectual property law (patent, trade mark, copyright/design and general).  The questions are sent to AIPPI member groups in participating countries (and regions), and those groups each produce a report in response based on the laws of their particular jurisdiction.  A Reporter General team analyses and condenses the various responses into a Summary Report, which are examined by an AIPPI Study Committee that ultimately produces a draft Resolution.  The draft Resolution ins then debated in a series of meetings at Congress and (after amendment and more debate), voted and then adopted at the World Congress. You can read more about AIPPI's working methods here.

What was the 2019 study question on patents?

The study question relating to patents for this year concerned "the question whether “plausibility” should be considered as a (further) patentability requirement, and if so, how to define its preconditions". In setting the question, AIPPI noted that the lack of a harmonized worldwide approach to plausibility at present causes legal uncertainty, increased complexity and reduced collaboration between patent offices. This, coupled with significant economic impact (especially in the life sciences/pharma sector), makes plausibility an important area of study for AIPPI. The 27 queries raised in the study question were limited to certain specific sub-issues relating to plausibility, namely "(1) the general credibility of the invention, (2) the general prohibition of speculative filings and (3) specific restrictions regarding “prophetic” examples" with the aim of analysing "whether the plausibility requirement should include some or all of the above-mentioned sub-issues, and if so, which would be the “best fit“ for plausibility within the established patentability requirements".

What were the responses?

AIPPI received 34 responsive reports in total, which are discussed in the Summary Report produced by the Reporter General team. Some interesting results emerge:

• 60% of responding country groups said that their national law did not currently contain a plausibility provision and that including one would not be desirable.

• A clear majority (80%) of responding country groups considered that harmonization of plausibility requirements is desirable, but only 45% of respondents said that there should be a plausibility requirement (presumably a considerable proportion of respondents were of the view that plausibility requirements should be 'harmonized' in the sense of being abolished).

• In considering whether plausibility should be a 'credibility' requirement excluding patent applications which describe a technical effect which looks 'incredible', a slim majority (55%) said no. Of those groups who said "yes", virtually all agreed that 'credibility' should be determined from the perspective of a person having ordinary skill in the art. It is clear from the Summary Report that a broad range of opinions was voiced in relation to these questions – some respondents argued that the plausibility threshold should not be set too low if it is to prevent speculative patents, while others suggested that different thresholds should apply depending on whether or not the results disclosed in the patent would be considered 'surprising', or depending on the type of claim. Concern was also voiced regarding the potential for confusion between the plausibility requirement and other patentability requirements.

• Only 40% of respondents said that it should be necessary for all of the 'promises of the patent description' to have to seem achievable to a person skilled in the art.

• 60% of respondents were of the view that plausibility should prohibit 'speculative' patent applications which do not expressly disclose a technical effect. However, a wide range of views were expressed as to how this should be achieved and, essentially, how high the plausibility threshold should be set. For example, should experimental data always be provided in a patent application, or would a convincing scientific theoretical explanation be enough? What about a situation where the relevant technical effect is made plausible solely by reference to the skilled person's common general knowledge?

• Only 30% of respondents thought that plausibility should be a specific prohibition against 'prophetic examples'. Similarly, only 25% of respondents agreed that all examples or embodiments of a patent need to pass the plausibility test for that patent to be valid.

• Almost all responding country groups agreed that plausibility should be assessed as at the priority date, and that in post-grant proceedings the opponent should have the burden of proof to demonstrate lack of plausibility. Things were more evenly balanced in relation to application proceedings. About half of respondents thought that the burden should initially be on the patent office to demonstrate that an application fails to meet the plausibility requirement, at which point the burden should shift to the applicant. The other half said that the burden should be on the applicant to prove that the plausibility requirement has been met.

What next?

It is hard to argue with the conclusion of the Summary Report that "the issues being discussed in this Study Question are of high practical relevance, and substantive harmonization of the handling of these issues seems desirable". However, it is clear that the responding country groups were far from united in their views on how such harmonisation should take place; 45% were in favour of a stand-alone plausibility requirement while 55% were not. It may be that debate at the World Congress shifts away from seeking agreement on the specifics of a harmonized plausibility requirement towards a more general discussion of the importance of preventing 'speculative' patents, a sentiment which seems to have more general support from respondents. In any event, reaching agreement on the text of a resolution relating to this issue seems unlikely to be straightforward."

The UK Group's response can be found here.   Given that the UK is at the epicenter of the plausibility threshold, the AmeriKat is expecting to face some fierce debate in Westminster in a few weeks time with the UK Group at the heart of it.  Seems somehow fitting...