EPO Referral: Should Post-Filed Data Render a Patent Plausible? EPO Referral Confirmed

 

A referral has been made to the Enlarged Board of Appeal (EBA), the EPO’s highest authority, in relation to whether “post-filed” (or “post-published”) evidence may continue to support the patentability of an invention that is plausible based upon the original content of the application. Read our article EPO Referral: Should Post-Filed Data Render a Patent Plausible? for the backstory to the case.

The referral stems from Sumitomo’s European patent, EP2484209, the decision on which has now been published as T 0116/18. The decision confirms that the questions referred to the EBA are:

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 postpublished evidence must be disregarded if the proof of the effect rests exclusively on this evidence), can the postpublished 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)?

As a summary of the possible outcomes from our earlier post, if the EBA conclude that post-published evidence should be disregarded, then patentees may be prevented from demonstrating the existence of a technical effect over a closest prior art document of which they were unaware until after their application was filed. Alternatively, the EBA may decide that the test for plausibility has a lower threshold than inventive step, and that the plausibility of an invention is not reliant on a technical effect being demonstrated across an entire claim.

If you would like to discuss how post-published evidence may impact your case, or have any questions in relation to the matters discussed in this article, please contact us at gje@gje.com. Information about the author of this piece can be found here.

 

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