EPO referral to the Enlarged Board of Appeal (G2/21)
20 October 2022
In 2021, a referral was made to the Enlarged Board of Appeal (EBA) in case T116/18 concerning whether post-published evidence (i.e., information not available until after the filing date of a patent application) can be used to demonstrate a technical effect in the assessment of inventive step. The EBA has now issued its non-binding preliminary opinion ahead of a formal hearing scheduled for November.
Setting out the issues
In assessing inventive step, the EPO applies the “problem-solution approach”.
This involves identifying the “closest prior art”, establishing the “objective technical problem” to be solved based on the technical effect brought about by the distinguishing features over the closest prior art, and determining whether the claimed invention, starting from the closest prior art and the objective technical problem, would have been obvious to the skilled person.
The technical effect – and therefore the objective technical problem solved by the invention – can vary significantly depending on what is deemed by the EPO to be the closest prior art. However, EPO case law to date is divided on what evidence can be used to demonstrate that technical effect. If evidence of the technical effect in view of all possible closest prior art needs to be established in the application as filed, there is an argument that this presents an unreasonable burden on the patentee .
The Board of Appeal in T116/18 felt the need to refer the following three questions on post-published evidence to the Enlarged Board of Appeal:
Referred questions
- 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)?
The preliminary answer to the first question is no. The EBA considers there to be a basic legal procedural right for post-published evidence to the considered.
Despite the answer to question 1 being no, the EBA’s preliminary opinion provides some guidance on questions 2 and 3.
For question 2, the EBA considers it reasonable for post-published evidence to be taken into account when the technical effect relied upon is plausible. The preliminary answer to question 2 is therefore yes.
As for question 3, the EBA questioned the use of post-published evidence when the skilled person had “significant doubts in respect of the purported technical effect”. However, evidently this possibility is not ruled out when insignificant doubts arise.
Final remarks
Whilst this is a non-binding preliminary opinion, it does give an indication of the EBA’s present view of the situation ahead of the hearing scheduled for 24 November 2022.
From this latest communication, the EBA appears to be of the view that post-published evidence can be used to demonstrate technical effect and can only be disregarded if the skilled person would have significant reason to doubt the technical effect based on the application as filed. We will have to wait until the end of November to discover whether or not the final decision will reach the same conclusion.
David Stanier
Advanced Engineering group
This publication is a general summary of the law. It should not replace legal advice tailored to your specific circumstances.
© Withers & Rogers LLP October 2022
