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Green Patents: Common Challenges in Prosecution Before The EPO

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Patents relating to technologies having a potential mitigation effect on global climate change, which are essential to protect and booster innovation promoting sustainability, have sensibly grown in the last two decades. Based on code Y02, a classification scheme proposed by the European Patent Office (EPO) for climate change mitigation technologies, the growth of the world patent families directed to these technologies have steadily grown until 2018, when for the first time a slight decline appeared. 


The decline appears to be more pronounced in certain technological areas, such as solar and wind technologies and fuel cells (See, for example, a World Intellectual Property Organization study on green energy technologies). Energy generation through renewable energy sources, however, includes technological areas which were still growing in 2021. This is the case, for example, of offshore wind turbines (cpc: Y02E10/727).

Among offshore wind turbines, floating wind turbines, which are mounted on floating structures allowing generation of electricity in water depths where fixed-foundation turbines are not feasible, are still at the early stage of commercialization, the world's first commercial floating offshore windfarm having started generating electricity in 2017. For these technologies, further developments and patent applications may be expected. The same applies to hydrogen produced using renewable electricity via electrolysis. 
 

More mature technologies, such as geothermal heat pumps and chemicals produced from renewable sources, could also attract further investments and generate further innovation.

States have obligations in respect of global climate change, in particular pursuant to the Paris Agreement under the United Nations Framework Convention on Climate Change. In view of these obligations, national and multinational plans aimed at promoting the green transition have been announced or are in progress (e.g. the European Commission's dedicated “Strategy on hydrogen” adopted in 2020, its proposal REPowerEU, or the recent vote of the European Parliament supporting a ban on the sale of cars with combustion engines by 2035, just to name a few European plans). Further research, development and commercialization of climate change mitigation technologies are thus expected in the next years.

Despite the technical differences in the many technologies allowing or facilitating the green transition and, more generally, sustainability, common legal challenges may be encountered in the prosecution of patent applications directed to these technologies.

For example, inventive step, one of the patentability requirements set by the European Patent Convention (EPC), may be difficult to comply with when inventive step is merely stated to be based on a “environmentally-friendly outcome” or when a result is exclusively presented in terms of “environmental benefits”. The main reason leading to this difficulty lies in the problem-solution approach used by the EPO when assessing inventive step of a European patent application not containing sufficient experimental evidence showing an unexpected technical effect over the closest prior art and merely relying on applicants’ statements declaring a general environmental benefit.

In the absence of evidence of such a technical effect, a European examiner will inevitably conclude that the technical problem solved by the claimed invention has to be reformulated less ambitiously, namely as providing an alternative product/device/method, at the case may be. In such a case, the claimed subject-matter is then often judged not to involve an inventive in view of the closest prior art.

Under these circumstances, the burden of proof for the stated benefit entirely rests upon the applicant. The applicant may try to address an objection of lack of inventive step of this type by submitting experimental evidence. Experimental evidence showing that the distinguishing features of the claimed subject-matter attain an unexpected technical effect over the closest prior art may be taken into account if a suitable comparison between the invention and the closest prior art is made. However, exclusively relying on post-published evidence, i.e., not having been public before the filing date of the patent application and having been filed after that date, may be problematic because post-published evidence can be disregarded by the EPO.

Indeed, diverging lines of EPO case law exist in this regard. As discussed by the Board of Appeal which rendered decision T 0116/18, “three diverging lines of case law from the boards regarding the circumstances under which the evidence can or cannot be taken into account”.

A first line of case law takes post-published evidence into account only if, given the application as filed and the common general knowledge at the filing date, the skilled person would have had reason to assume the purported technical effect to be achieved ("ab initio plausibility" standard). A second line of case law can only disregard post-published evidence if the skilled person would have had legitimate reasons to doubt that the purported technical effect would have been achieved on the filing date of the patent in suit ("ab initio implausibility" standard). A third line of case law rejects the concept of plausibility altogether ("no plausibility" standard). The line of case law applying this third standard considers that dismissing comparative tests is inconsistent with the problem-solution approach, requiring defining a technical problem from the closest prior art document, which is not necessarily the one cited in the patent application.

In view of these different standards and relating risks of non-admissibility if plausibility is not clearly shown from the beginning, the Board of Appeal of case T 0116/18 referred important questions to the Enlarged Board of Appeal (pending case G2/21) to ensure uniform application of the law. The decision of the Enlarged Board of Appeal will likely impact the way European patent applications have to be drafted and prosecuted because post-published evidence could be considered not to be admissible if the proof of the technical effect rests exclusively on this evidence or could be considered admissible only under strict conditions. Not only providing evidence, but also providing many fallback positions in the application as filed could thus become more important for maximizing the room for different defense strategies both before the EPO examining divisions and before opposition divisions or litigation courts.

While the outcome of referral G2/21 may be important well beyond the field of green technologies, another potential criticality connected with technologies having an beneficial environmental impact may rise whenever the claims of a patent application are directed to non-technical objectives, such as business or social objectives. Albeit important, these objectives may impair inventive step. For example, in decision T1147/05, the “reductions in environmental impact” determined by the invention directed to an environmental impact information system were not regarded as a technical effect by the Board, thus leading to a lack of inventive step.

General environmental objectives may also jeopardize eligibility due to lack of technical character of the claimed subject-matter, which inevitably gives rise to a subject-matter excluded as such under Article 52(2) and (3) EPC, and should thus be avoided. This was the case in T1029/06, where the claimed "environmental impact estimation method" was not regarded as an invention in the sense of Article 52(1) EPC.

Another potential issue may be more specific to inventions essentially consisting in the replacement of fossil sources with renewable (e.g. plant-based) sources, as the sources of one or more starting materials of a process for producing chemicals. Despite the undeniable environmental benefits deriving therefrom, a European examiner may consider that a product obtained by a process exclusively based on this replacement is not new because, according to the established EPO case law, a product is not considered novel by the mere fact that it is produced by a new process. Evidence to the contrary could be submitted, but the burden of proof could be a heavy one, especially for performing comparative tests in accordance with the prior art reference. If comparative data are not available, in such a case, novelty could be for example established by selecting, as a (positive) distinguishing feature, a component deriving from the renewable starting material(s) which is not found in the product obtained by fossil sources, or by selecting, as a negative distinguishing feature, a component deriving from the fossil starting material(s) which is not found in the product obtained by the renewable sources (disclaimer). Additionally, the need of showing an unexpected technical effect attained by the positive or negative distinguishing feature still exists for complying with the inventive step requirement.

Also, the development of green technologies may require expertise from different technical fields, with a consequent difficulty posed both to patent examiners and attorneys. An early involvement of all inventors in the discussions made in preparation of the patent application could contribute to cope with this difficulty.

While the EPC requirements herein considered have to be complied with by each and every invention, regardless of the technology underlying it, it is important that applicants be aware of the different challenges they may have to face when prosecuting an environmentally-related patent susceptible of mitigating global climate before the EPO.