The EPO often considers data from after the filing date (post-published data) when assessing inventive step, but the Enlarged Board of Appeal (EBA) has been asked to clarify when this practice should be allowed in G2/21. Today the EBA has issued a communication under Articles 13 and 14(2) RPEBA, drawing attention to matters in the referral that the Board considers to be of “potential significance” in order to allow the parties to comment and prepare ahead of the oral proceedings (scheduled for 24th November 2022). Our previous note summarises the details and events of the referral up until now, but this is the first chance for innovators to see how the EBA might rule in this matter.
Although the Board expressly states that the comments in this communication have no binding effect on its decision in G2/21, it is interesting to see its preliminary views on the referred questions and the amicus curiae briefs. We have summarised some of the Board’s comments below.
On formal matters, the Board dismisses criticism of the wording of the referred questions, seeing no immediate need for these to be redrafted or re-ordered (¶6), and confirms that the referral is admissible (¶7-9). In ¶14, the Board limits the scope of the referral to inventive step only (i.e. not sufficiency).
Turning to the referred questions, question 1 (should post-published evidence be disregarded if it is the only evidence of a technical effect) is discussed in ¶10-12 of the communication. The Board refers to the principle of free evaluation of evidence as “a key rule of procedural law governing the patent granting proceedings” and as such questions whether this principle allows post‑published evidence to be disregarded under the plausibility doctrine (¶12):
In consequence, the principle of free evaluation of evidence does not appear to allow disregarding evidence per se insofar as it is submitted and relied upon by a party in support of an inference which is challenged and is decisive for the final decision. Disregarding such evidence as a matter of principle would deprive the party submitting and relying on such evidence of a basic legal procedural right generally recognised in the contracting states and enshrined in Articles 113(1) and 117(1) EPC.
These comments in ¶12 suggest that the Board is considering answering the first question “no” (which might have the effect of abolishing the requirement for plausibility altogether when using post-published data to support inventive step). However, in ¶13 the Board acknowledges the need to provide guidance on referred questions 2 (ab initio plausibility) and 3 (ab initio implausibility), and then proceeds to do so in the following paragraphs.
For instance, the Board’s comments in ¶16 and ¶17 suggest that it currently favours an ab initio implausibility test:
“It is then on the basis of the application documents and this technical teaching that a purported technical effect relied upon for inventive step is to be assessed as to whether the skilled person, having the common general knowledge in mind, would have had any significant reason to doubt it.
In the absence of any such doubts, the reliance on post‑published evidence, such as experimental data, for the purported technical effect would seem to serve as a potential source for a deciding body to conclude whether or not it is convinced of said technical effect when deciding on the inventiveness of the claimed subject-matter.”
In addition to this preliminary endorsement of an ab initio implausibility test, the Board notes in ¶15 that “the technical effect relied upon, even at a later stage, needs to be encompassed by [the technical teaching of the claimed invention from the application as filed] and to embody the same invention”. This suggests the possibility of an additional threshold being mentioned in its ultimate decision, perhaps one similar to the long-standing line of case law on reformulation of the technical problem.
Of course, these comments from the Board are explicitly non-binding, and may change following further arguments from the parties in writing or at the oral proceedings on 24th November 2022. For further clarity we will have to await the Board’s decision, which we expect to be issued in Q2‑Q3 2023. In the meantime, we will continue to monitor the referral and help clients find the best approach given the uncertain position in relation to plausibility and the use of post-published evidence at the EPO.