Ahead of the Oral Proceedings scheduled for 24 November 2022, the EPO Enlarged Board of Appeal (EBA) has issued its preliminary opinion on the questions referred in G2/21.
The EBA firstly confirms that the questions do not need to be re-drafted or re-ordered. They also confirm that the referral is admissible.
Regarding Question 1, the EBA states:
“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.”
With regard to Questions 2 and 3, the EBA states:
“… 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.
However, whether such evidence could also successfully be relied upon in the event that the skilled person, on the basis of the application as originally filed together with the common general knowledge, had significant doubts in respect of the purported technical effect, appears questionable.”
The EBA also made clear that the questions need only be considered with respect to inventive step, and not sufficiency (Article 83 EPC).
The preliminary opinion of the EBA can be viewed here
