In November 2021, a Technical Board of Appeal referred to the Enlarged Board of Appeal regarding the notion of Plausibility and how it should be approached before the EPO.
In this referral G2/21, the Technical Board of Appeal posed the following questions:
If for acknowledgement of inventive step the patent proprietor relies on a technical effect and has submitted evidence, such as experimental data, to prove such an effect, this evidence not having been public before the filing date of the patent in suit and having been filed after that date (post-published evidence):
- Should an exception to the principle of free evaluation of evidence (see e.g. G 3/97, Reasons 5, and G 1/12, Reasons 31) be accepted in that post-published evidence must be disregarded on the ground that the proof of the effect rests exclusively on the post-published evidence?
- If the answer is yes (the post-published evidence must be disregarded if the proof of the effect rests exclusively on this evidence), can the post-published evidence be taken into consideration if, based on the information in the patent application in suit or the common general knowledge, the skilled person at the filing date of the patent application in suit would have considered the effect plausible (ab initio plausibility)?
- If the answer to the first question is yes (the post-published evidence must be disregarded if the proof of the effect rests exclusively on this evidence), can the post-published evidence be taken into consideration if, based on the information in the patent application in suit or the common general knowledge, the skilled person at the filing date of the patent application in suit would have seen no reason to consider the effect implausible (ab initio implausibility)?
In parallel to this referral, and as per Article 87 of the Official Journal of the EPO of 2021, the president of the EPO decided to stay all proceedings in which the decision depended entirely on the Enlarged Board of Appeal’s decision on referral.
On 23 March 2023, the Enlarged Board of Appeal published the awaited decision regarding this referral. In this decision, the Enlarged Board of Appeal concludes as follows:
- Evidence submitted by a patent applicant or proprietor to prove a technical effect relied upon for acknowledgement of inventive step of the claimed subject-matter may not be disregarded solely on the ground that such evidence, on which the effect rests, had not been public before the filing date of the patent in suit and was filed after that date.
- A patent applicant or proprietor may rely upon a technical effect for inventive step if the skilled person, having the common general knowledge in mind, and based on the application as originally filed, would derive said effect as being encompassed by the technical teaching and embodied by the same originally disclosed invention.
This decision thus confirms the principle of free evaluation of evidence, qualifying it as a universally applicable principle in assessing any means of evidence under the EPC, and thus clarifies that evidence cannot be dismissed only because they are post-published.
It also provides guidance on how post-published evidence can be used to support a technical effect for the purpose of defending the inventive step. In particular the decision makes it clear that the relevant standard for the reliance on a purported technical effect when assessing whether or not the claimed subject-matter involves an inventive step concerns the question of what the skilled person, with the common general knowledge in mind, would understand at the filing date from the application as originally filed as the technical teaching of the claimed invention. The technical effect relied upon, even at a later stage, needs to be encompassed by that technical teaching and to embody the same invention, because such an effect does not change the nature of the claimed invention (see paragraph 93 of the reasons).
In a notice dated 24 April 2023, intended for a subsequent publication in the Official Journal of the EPO, the EPO follows up on the decision of the enlarged Board of Appeal in indicating that the President of the EPO has decided to lift the previously introduced stays on proceedings, with effect from 24 March 2023. The affected proceedings will thus be gradually resumed.
This IP Alert is for information purposes only and does not constitute legal advice.
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