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13 April 2022
To answer the question whether post-filed data and evidence can be relied on to satisfy the requirement of inventive step, the Enlarged Board of Appeal of the EPO wants to look into the plausibility of a technical effect (the so-called “post-published evidence”). The EPO issued its Notice concerning the stay of proceedings due to referral G 2/21 “Plausibility” and explained that the referring board seeks to clarify whether an exception to the principle of the free evaluation of evidence should be accepted in that post-published evidence must be disregarded if the inventive step is acknowledged on the basis of a technical effect and the proof of the effect rests exclusively on such post-published evidence (question 1).
It further asks whether, if the post-published evidence is to be disregarded, it can be taken into consideration if the skilled person at the filing date of the patent application would have considered the effect plausible (question 2) or not implausible (question 3).
The notice took immediate effect and all examination and opposition proceedings before the EPO in which the decision on inventive step depends entirely on the outcome of the referral are being stayed. The stay will be lifted only after the Enlarged Board of Appeal has issued its decision.
In view of different standards applied in the case law, the following questions were referred to the Enlarged Board of Appeal for decision:
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):
1. 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?
2. 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)?
3. 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)?
The concept of plausibility originates in the EPO case law as a response to applicants filing overly-broad and speculative claims. It is common practice at the EPO to use the “problem/solution” approach to assess inventive step. This approach involves determining the difference between the claimed invention and the closest prior art, and determining which technical effect is generates in view of the prior art. Based on this effect, an “objective technical problem” is formulated for which the invention provides a solution. At the EPO it is looked at whether the technical effect of an invention has been made “plausible” throughout the claimed scope and therefore allowed submitting post-filed (experimental) data to confirm the technical effect. Especially in the field of biotechnology, life sciences and chemistry, the EPO is used to deal with plausibility and post-filed data. , the new referral, which stems from decision T 0116/18 follows could result in new interpretations of the plausibility assessment by the Enlarged Boards of Appeal, potentially swiping away earlier decisions on this matter and changing the practice completely.
How many patent applications and patents there are involved where the assessment of inventive step can be said to rest exclusively on post-published evidence is yet not clear. It is also not clear what this means for applicants, patent owners and opponents. One can think about Opposition cases where it may be difficult to reach the conclusion that the decision depends exclusively or entirely on the outcome of the referral, without having heard the arguments of all parties during oral proceedings.
As part of the procedure, third parties are also given the opportunity to file written statements to the EPO regarding their opinion and considerations in the G2/21 case. The due date for so-called “amicus curiae briefs” is set on April 29, 2022.
We are looking forward to hearing more about the visions of important stakeholders industry and the patent professionals, dealing with this matter for their clients. The amicus briefs as they are being filed are visible here.
In the meantime, we will keep you updated on this case. If you have any questions, feel free to reach out via email on firstname.lastname@example.org
The text of the referral in English is available here.