Post - Published Data: EPO Decision

The European Patent Office’s Enlarged Board of Appeal (EBA) has published its decision on whether post-published evidence may be used to prove a technical effect relied on to establish inventive step.

The decision by the EBA the highest judicial authority under the European Patent Convention (EPC), was made on 23 March 2023 and referenced G2/21.

The decision

G2/21 revolved around whether the evidence required to support a technical effect for patentability can be submitted after an application has been filed. Although the questions referred to the EBA raised the concept of ‘plausibility’ in relation to whether a technical effect was present, the decision made it clear that ‘plausibility’ is not a distinctive legal concept or a specific requirement under the EPC.   

After considering the positions taken by the courts in a number of major EPC jurisdictions, the EBA confirmed that the principle of free evaluation of evidence should apply under the EPC. Accordingly, the EBA concluded firstly that:

“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.”

In other words, evidence filed to try to prove a technical effect cannot be rejected simply because it was not contained in the patent application as-filed.

The EBA considered that the relevant consideration is what a skilled person, with the aid of common general knowledge, would understand from the application as originally filed. Therefore, it matters whether the technical effect from the post-published evidence is “encompassed by the technical teaching” of the original application. Any technical effect sought to be relied upon, even later in the proceedings, must be derivable from the original application.  The EBA’s second conclusion was thus:

“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 case will give some comfort to applicant’s seeking to introduce post-published evidence into proceedings under the EPC. Although the EBA acknowledged that their decision introduces some abstractness, they hope to have provided some “guiding principles” to decide the circumstances under which post-published evidence can be used to prove a technical effect and so support a finding of inventive step.,

The EPO press release on the G2/21 decision can be found at this link:  http://bit.ly/43dDWXC

Mathisen & Macara can advise you on the G2/21 decision and what it means for your patent applications