This decision was long awaited as the OP took place on 24.11.2022.
The patent relates to compositions exhibiting inseciticidal action, which comprise compounds represented by a general formula [Ia] or salts thereof and thiamethoxam and to methods for controlling insect pests by use of a mixture of said compounds.
Brief outline of the case
The opponent appealed the OD’s decision to reject the opposition.
During the appeal procedure the opponent relied on post-published evidence for inventive step, namely D23 (test data), which the referring board decided to admit into the proceedings on procedural grounds. The tests of the opponent showed no synergistic effect.
For inventive step, the patent proprietor relied on, inter alia, post-published evidence D21 (test data) in support of a synergistic effect.
In view of the parties’ different positions on the applicability of the so-called plausibility case law, both formulated opposing requests as to whether post-published evidence D21 should be taken into consideration.
The referring board concluded that, if only the data in the patent and D23 were taken into account, the patent proprietor’s MR would not be allowable.
However, if D21 was also to be taken into account, the patent proprietor’s MR would be allowable as the post-published experimental data in D21 were the only but crucial proof for the alleged synergy effect.
Summary of the questions referred to by the board
- Should post-published evidence be disregarded on the ground that the proof of a technical effect rests exclusively on post-published evidence?
- Can post-published evidence be taken into account if an effect was plausible from the application as filed (“ab initio plausibility“)?
- Can post-published evidence be taken into consideration if there would have been no reason to consider an effect implausible from the application as filed (“ab initio implausibility“)?
Submissions on admissibility and relating to the questions referred
Some submissions were considering that the referral was not admissible, some suggested that sufficiency was also a topic concerned by the referral. Most considered it admissible.
Question 1 – Free evaluation of evidence
As far as question 1, does the principle of free evidence allows to take into account post-published evidence, was concerned, there were some submissions denying the possibility of taking into account post-published evidence as a matter of principle, mainly for reasons of legal certainty.
Other submissions were such that the free evaluation of evidence should be maintained, albeit with reservations.
Question 2 – Ab-initio plausibility
Most submissions considered that post-published submissions could be accepted to confirm an effect, but an alleged technical effect has to be shown on the basis of the content of the application as filed in combination with common general knowledge. A lack of such disclosure could not be made up for at a later stage by submitting post-published evidence showing that the alleged technical effect was indeed achieved. The disclosure at the filing date should at least be credible.
The proprietor submitted that the approach underlying question 2 was at most applicable for the assessment of sufficiency of disclosure in particular where the technical effect was stated in the claim. It should, however, not be applied to the assessment of inventive step because it would be extremely disproportional in terms of the legal effect, the awareness of the patent applicant and the burden of proof.
Question 3 – No ab initio implausibility
One set of submissions can be considered to be in favour of taking into consideration post-published evidence as a proof of an asserted technical effect if, based on the information in the application or on common general knowledge, the skilled person would have seen no reason to consider the effect non–credible.
In this vein, one submission considered that it should suffice if the technical effect ultimately relied upon was merely “not completely implausible”, especially bearing in mind that at the filing date the applicant may not know the closest prior art from which the claimed invention must be distinguished.
On the other hand, the approach underlying question 3 was considered negatively as it lowered the threshold to patentability significantly and allowed for patents to be granted on the basis of, at the filing date, a merely speculative technical effect.
The EBA’s position
The EBA considered the referral admissible, but was of the opinion that the questions referred were only linked with IS and have nothing to do with sufficiency, since the referring board had accepted that sufficiency was given.
The EBA also decided that the questions would not be reformulated or reordered.
Use at the EPO of the problem-solution approach and its consequences on a possible technical effect
The EBA reminded that in order to assess inventive step, the boards of appeal and the administrative departments of the EPO use the “problem-solution approach“. The EBA especially drew the attention to the determination of the objective technical problem resulting from the difference of the claimed subject-matter with the closest prior art and the effect of the difference.
The technical problem must be derived from effects directly and causally related to the technical features of the claimed invention.
An effect could not be validly used in the formulation of the technical problem if the effect required additional information not at the disposal of the skilled person even after taking into account the content of the application in question.
Free evaluation of evidence
For the EBA, evidence submitted by an 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.
The EBA added that the judge must put all the arguments for and against a factual statement in relation to the required standard of proof. In doing so, the judge remains bound by the laws of the logic and by probability based on experience. The reasons that led the judge to be convinced of the correctness or incorrectness of a contested allegation as to fact are to be set out in the decision.
The deciding bodies under the EPC have the power and the duty to assess whether the alleged facts are sufficiently established on a case-by-case basis.
Free evaluation of admissibly filed evidence relevant for deciding the case at hand means that there are no firm rules according to which certain types of evidence are, or are not, convincing.
After having looked at how the principle of free evaluation of evidence in the Contracting States, the EBA concluded that the principle of free evaluation of evidence qualifies as a universally applicable principle in assessing any means of evidence by a board of appeal.
If post-published evidence is considered to lack prima facie relevance or is not required for the decision on the issue in question of the case at hand, there is no need for it to be taken into account by the competent board of appeal.
Analysis of case law of the boards in matters of plausibility
The EBA analysed the lines of case law developed by the boards in matters of plausibility of a technical effect for assessing inventive step.
When analysing this case law in the EBA concluded that the core issue rests with the question of what the skilled mind understands at the filing date from the application as originally filed as the technical teaching of the claimed invention. This conclusion is irrespective of the conceptual terminologies for what questions 2 and 3 refer to as two distinct plausibility approaches.
Analysis of case law of the boards in matters of sufficiency of disclosure
The EBA concluded that reliance on post published evidence is much narrower under sufficiency of disclosure compared to the situation under inventive step
The EBA noted that the proof of a claimed therapeutic effect has to be provided in the application as filed, in particular if, in the absence of experimental data in the application as filed, it would not be credible to the skilled person that the therapeutic effect is achieved. A lack in this respect cannot be remedied by post-published evidence.
Analysis of national case law in matters of plausibility
The EBA recognised a certain degree of common ground that the courts of the EPC Contracting States, when confronted with the examination of an asserted technical effect in the assessment of inventive step relying on post-published evidence as proof of a technical effect take, duly into account what the person skilled in the art, with common general knowledge, understand from the application as filed.
Plausibility or not plausibility? – That is the question
For the EBA, the term “plausibility” found in the case law of the boards and relied upon by the referring board in questions 2 and 3 of the referral and the reasons for it, does not amount to a distinctive legal concept or a specific patent law requirement under the EPC, in particular under Art 56 and 83.
For the EBA, the term “plausibility” rather describes a generic catchword seized in the jurisprudence of the boards by some national courts and by users of the European patent system. That it is not a criterion found in the EPC is manifest, but the problem-solution approach is also not to be found in the EPC.
The general conclusion of the EBA
The EBA confirmed the general principle of free evaluation of evidence, according to which late-filed evidence provided in order to assess inventive step, cannot be disregarded as merely being late-filed.
The EBA held that an 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. The EBA added that the technical effect cannot and “does not change the nature of the invention”.
The EBA added that it was aware of the abstractness of some of the aforementioned criteria.
However, the EBA considered that the guiding principles it has set out should 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 deciding on inventive step.
The final position of the EBA was already contained in its communication of 13.10.2022.
Looking at the decision of the EBA, one possible conclusion is that the term “plausibility”, which was a convenient concept used by the boards and national courts, should not be used any more.
At best, and already hinted at in the communication of 13.10.2022, it is the notion of ab-initio implausibility which seems to have been determining, whilst the EBA refused to give an answer to questions 2 and 3 from the referring board.
In general, the notion of “plausibility” is to be replaced by the following criteria:
- an effect supporting inventive step should be “encompassed by the technical teaching” and
- should be “embodied by the same invention” as originally disclosed in the application as filed.
That those two notions/criteria will give raise to a “dynamic interpretations” of the decision and of the criteria set out is more than probable.
It is a euphemism when the EBA adds that it was aware of the abstractness of the new criteria.
Normally decisions of the EBA are meant to clarify a legally confuse situation. Strong doubts are permitted whether G 2/21 answers this fundamental requirement.
That evidence has to be admitted in the procedure before being decided as to its substance goes without saying, but is a formal reason allowing boards not to admit late-filed evidence under the RPBA20.
It is clear that when applying the problem-solution approach, the technical effect which results from the differences between the closest prior art and the subject-matter claimed might not necessarily be the one relied upon originally by the inventor.
However, when a (therapeutic) effect is claimed as such, then the (therapeutic) effect is a functional feature of the claim and cannot be ignored.
The refusal of the EBA to extend its considerations to sufficiency is regrettable.
In G 1/03, OJ 2004, 413, Points 2.5.2 the EBA held that, depending on whether or not an effect is claimed the objection can change when there is lack of reproducibility of the claimed invention:
- If an effect is expressed in a claim, there is lack of sufficient disclosure.
- Otherwise, i.e. if the effect is not expressed in a claim but is part of the problem to be solved, there is a problem of inventive step.
T 2001/12 confirmed by T 847/14 and T 1469/16 has exemplified what was said in G 1/03. In view of this line of case law it is difficult to follow that reliance on post published evidence is much narrower under sufficiency of disclosure than under inventive step.
It might be worth drawing the attention to other decisions in which contrary statements had been made by the proprietor and the opponent.
In case of contradictory assertions by the parties, albeit in matters of sufficiency, whereby the Office is not in a position to decide, then the benefit of the doubt goes to the proprietor, cf. T 72/04, Reasons. 3., last but one §, or T 1598/15, Reasons 1.3.
Why could not what is valid for sufficiency be applied to inventive step?