http://www.epo.org/law-practice/case-law-appeals/communications/2023/20230323.html
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23 March 2023
Background
The Enlarged Board of Appeal is the highest
judicial authority under the European Patent Convention (EPC). Its main task is
to ensure the uniform application of the EPC.
Technical Board of Appeal 3.3.02 referred
questions on the principle of free evaluation of evidence and the notion of
“plausibility” in the context of inventive step to the Enlarged Board of
Appeal. With regard to the latter, the referring board identified three
different lines of case law (see interlocutory decision T 116/18, Reasons 13.4-13.6).
European patent EP 2 484
209 concerns an insecticide composition for
controlling an insect pest. According to the patent, two compounds which were already
known for their respective insecticidal activity have more than a purely
additive effect when used as a mixture, i.e. a synergistic effect.
Determining the technical effect of an
invention plays an important role when applying the so-called “problem and
solution approach”. This approach is regularly applied by the boards of appeal
and the administrative departments of the EPO in the course of deciding whether
or not the claimed subject matter involves an inventive step.
According to established case law, it rests
with the patent applicant or proprietor to properly demonstrate that the
purported technical effects or results of the claimed invention have
successfully been achieved. In the case underlying the referral, the patent
proprietor relied on test data filed and published after the filing date of the
patent (post-published evidence) in support of the alleged synergistic effect.
According to the referring board, it is decisive for the assessment of
inventive step whether or not this post-published evidence is to be taken into
account as proof for the alleged synergistic effect.
Key considerations
In its decision, the Enlarged Board of Appeal
qualified the principle of free evaluation of evidence as a universally
applicable principle in assessing any means of evidence under the EPC. Hence,
evidence submitted by a patent applicant or proprietor to prove the technical
effect relied upon for acknowledgement of inventive step may not be disregarded
solely on the ground that such evidence had not been public before the filing
date of the patent in suit and was filed after that date.
The Enlarged Board further considered that the
term “plausibility” did not amount to a distinctive legal concept or a specific
patent law requirement under the EPC.
According to the Enlarged Board, the
relevant standard for the reliance on the purported technical effect when
assessing whether or not the claimed subject matter involved an inventive step under
Article 56 EPC concerns the question of what the skilled person, with common
general knowledge in mind, would understand at the filing date from the
application as originally filed as the technical teaching of the claimed
invention. The technical effect relied upon, even at a later stage, needs to be
encompassed by that technical teaching.
The Enlarged Board of Appeal held that
these guiding principles would allow the competent board of appeal or other
deciding body to take a decision on whether or not post-published evidence may
or may not be relied upon in support of an asserted technical effect when
assessing whether or not the claimed subject-matter involves an inventive step.
The order
issued by the Enlarged Board of Appeal reads as follows:
1.
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.
2.
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.
Contact
Nikolaus Obrovski
Jeannine Hoppe
Spokespersons of the Boards of Appeal of the European Patent Office
[email protected]
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Further information