It is clear from the EPG’s decisions [1] that speculative or overly broad patents—especially in dynamic technological fields such as biotechnology—do not withstand judicial review. EPO statistics from 2023 already show an increase in objections based on lack of inventive step and insufficient disclosure. The EPG’s case law is likely to reinforce this trend and improve the examination of patent applications at the EPO.
Plausibility of Technical Effects:
A comprehensible technical contribution is essential in proceedings before the EPG. Functional claims must be supported by credible experimental data. The EPO decision G 2/21 is likely to have far-reaching implications in practice.
Broad claims vs. specific examples:
Broadly worded claims are attractive from the industry’s perspective because they offer the prospect of a broad monopoly. However, without a sufficient experimental basis, they are vulnerable to challenge. The EPG requires that the inventions covered by the claim be consistent with the results actually demonstrated.
Inventions relating to platform technologies:
Particularly in the case of platform technologies, the scope and technical contribution of the invention must be clearly defined. Anyone who attempts to claim all conceivable applications without providing sufficient technical support risks a subsequent limitation or loss of the patent in the event of a dispute.
The amount of experimental data required at the time of filing remains a challenge for the resource-constrained biotech industry. Coherent and legally sound claim formulations strengthen a patent’s resilience in opposition and court proceedings. It is essential to consider circumvention strategies and fallback positions from the very beginning. In light of this development, it is advisable to conduct a strategic reassessment of existing patent portfolios, a risk analysis for litigation, and a readjustment of new patent applications.
The integration of patent grant strategy with subsequent enforcement strategy is becoming increasingly important. Particularly in biotechnology—including biopharmaceuticals—with its long innovation cycles, patents must be designed not only for grant but also for the successful defense of claims in the event of a dispute.