EPO Enlarged Board of Appeal issues G 2/21 decision
Board provides guidance on evidence submitted after patent filing date | Eagerly awaited decision confirms what’s needed to prove a certain effect.
The highest judicial authority under the European Patent Convention (EPC), the Enlarged Board of Appeal, made an important decision last week (March 23) on using evidence submitted after a patent is filed to prove a technical effect.
The board was responding to questions submitted by the Technical Board of Appeal regarding the principle of free evaluation of evidence and the notion of “plausibility” in the context of inventive step.
The referral related to European patent EP 2 484 209, a type of insecticide made by mixing two compounds with a synergistic effect. It is held by Japanese firm Sumitomo Chemical Company, and was opposed by Syngenta on the grounds of lack of novelty and inventive step, insufficiency of disclosure and added subject matter.
In the case, Sumitomo relied on the test data filed and published after the filing date of the patent (post-published evidence) in support of the claimed technical effect. The Enlarged Board of Appeal was asked to determine whether or not this post-published evidence could be taken into account in the assessment of inventive step.
Free evaluation of evidence
In its decision, the board said that the evidence should not be disregarded solely because it had not been public before the filing date of the patent in suit, referring to the principle of free evaluation of evidence as a universally applicable principle in assessing any means of evidence under the EPC.
The board also considered that the term ‘plausibility’ “did not amount to a distinctive legal concept or a specific patent law requirement under the EPC”.
The relevant standard for the reliance on the claimed technical effect when assessing invention step under Article 56 EPC, the board stated, concerns what the skilled person, with 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 board issued the following order:
- 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.
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