The following three questions were submitted to the Enlarged Board of Appeal:
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 n suit and having been filed after that date (post-published evidence):
In response to the first question, as already stated in the preliminary opinion that we commented on here, the Enlarged Board of Appeal clearly expresses that there must be an exception to the principle of free evaluation of evidence.
Thus, post-filing data as post-published evidence of a technical effect for acknowledgment of inventive step of the claimed subject matter may not be disregarded solely on the ground that such evidence had not been public before the filing date and was filed after that date.
The Enlarged Board of Appeal also set out criteria for assessing an alleged technical effect in the framework of the analysis of an inventive step and for determining whether or not post-published evidence should be taken into account to evidence it.
The Enlarged Board of Appeal seemed to adopt the “ab initio implausibility” approach in the preliminary opinion. However, in the final decision, the Board clarifies that “plausibility” is only a generic term that does not amount to a distinctive legal concept nor a requirement of patentability or validity of European patents.
For the Enlarged Board of Appeal, the key question is rather to what extent it is possible to rely on any alleged technical effect to show the claimed subject matter involves an inventive step. To this question, the Board answered:
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.
Thus, in the context of assessing inventive step, the applicant will be able to rely upon the existence of an alleged technical effect provided that it is:
1) encompassed by the technical teaching of the application as originally filed, even at a later stage, and even if said technical effect has to be reformulated with respect to new prior art,
2) actually embodied by the same invention as originally disclosed, since the technical effect does not change the nature of the claimed invention.
The admissibility of post-published evidence would, therefore, not be linked to a criterion of plausibility of the alleged technical effect according to the Enlarged Board of Appeal, but would depend on what the skilled person skilled would understand as the technical teaching of the application as originally filed and having in mind the common general knowledge at the filing date.
The decision of the Enlarged Board of Appeal is, however, open to interpretation with regard to the criteria for determining whether a technical effect is indeed “encompassed by the technical teaching of the application” and “embodied by the same invention as originally disclosed”.
It is likely that the interpretation of these criteria by the Boards of Appeal will differ greatly depending on the technical field of the invention.
The Enlarged Board of Appeal recognizes the abstractness of the aforementioned criteria and leaves it to the Boards of Appeal to apply them and to decide each case on the basis of the facts.
