In a decision dated 11 October 2021, EPO Board of Appeal 3.3.02 has referred questions to the EPO Enlarged Board of Appeal (EBA) on use of post published evidence (e.g. experimental data filed during EPO opposition proceedings i.e. after the filing date of the Patent in suit) to prove a technical effect in the assessment of inventive step. The questions were originally suggested by the Board of Appeal and have now been finalized as follows:
- 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)?
Further information, and the Board of Appeal’s reasoning for referring questions can be found here
The EPO announcement on the new referral, G2/21, can be found here
