Latest data! Update on new Enlarged Board of Appeal referral on the use of post-filed data

Latest data! Update on new Enlarged Board of Appeal referral on the use of post-filed data

As we covered in our original article here in August 2021, there was the possibility of an EPO Technical Board of Appeal (TBA) asking the Enlarged Board of Appeal (EBA) to consider whether and when post-filed data can be used to support inventive step. We can at last announce that the referral to the EBA has happened (G2/21), so one of the most controversial issues at the EPO should soon be clarified.

The three questions to the EBA

The TBA referral is made against a background of a divergence in the Board of Appeal case law as to whether and when it is possible to rely on post-filed data. The referral reviews the case law in some detail and explains the reasoning behind the three questions that have been asked of the EBA: 

“1. 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 the post-published evidence must be disregarded on the ground that the proof of the effect rests exclusively on such post-published evidence?”

This first question arises from what the TBA characterises as a “no plausibility” strand of case law which rejects the notion of plausibility altogether. In simple terms, the rationale behind this strand of case law is that there is nothing in the statute that provides a legal basis for requiring plausibility. In essence, the EBA is being asked to consider whether there is any need for plausibility to be considered for post-filed evidence to be taken into consideration. 
If the EBA decides that plausibility should be a requirement, it is intended that the next consideration should be which of questions 2 and 3 is correct.

“2. If the answer is yes (post-published evidence must be disregarded if the proof of the effect rests exclusively on this evidence): can 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)?"

This question relates to what the EBA calls an ab initio plausibility strand of case law (for simplicity, we’ll call this “plausibility to be proven”), where it is assumed that an invention is implausible unless the patent application as filed shows that it is plausible. In other words, there must be something in the patent application that renders the invention plausible. This is based on the notion that the invention must be made when the patent application was filed.

“3. If the answer to the first question is yes (post-published evidence must be disregarded if the proof of the effect rests exclusively on this evidence): can 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)?"

This question relates to the converse of question 2, i.e. an ab initio implausibility strand of case law where it is assumed that an invention is plausible unless there is something to suggest it is not. We’ll call this “plausibility is assumed” for simplicity.
In a thoughtful discussion, the TBA acknowledges that question 1 (“no plausibility”) lies at one extreme and question 2 (“plausibility to be proven”) lies at another, with question 3 (“plausibility is assumed”) somewhere in between. In addition, it states that saying the answer to question 1 is “no”, i.e. adopting the “no plausibility” strand, could be problematic because it potentially opens the door to entirely speculative “armchair” patents which do not have any data at all. Arguably such patents could relate to inventions that were not made until after the patent application had been filed. Equally, the TBA points out that applying any plausibility standard would likely be in the face of there being no statutory basis to do so. In addition, saying the answer to question 2 is “yes” and applying the “plausibility to be proven” standard strictly will mean that applicants are likely only to get (probably narrow) patents for what they have exemplified in their patent.
This might suggest the TBA thinks the answer to question 3 is “yes”, i.e. that “plausibility is assumed” should prevail. However, it points out that any requirement at all for plausibility – particularly “plausibility to be proven” – could mean applicants are potentially faced with an insurmountable hurdle. This situation might arise where an applicant is presented with a new prior art document. In such situations, the applicant is required to demonstrate an inventive step relative to that prior art document. However, they may not be able to, because they would be barred by the plausibility requirement from using post-filing data to demonstrate this inventive step.

What might happen?

Given the tensions between “no plausibility” and plausibility generally, and between “plausibility to be proven” and “plausibility is assumed”, the EBA has quite a job on its hands. The outcome of the referral could have wide-reaching implications for applicants, particularly in the fields of chemistry and life sciences where data generation can be slow and costly.
We hope the EBA does not adopt a “plausibility to be proven” approach (question 2) as this would probably not be good news for patent applicants. In its discussion, the TBA noted that decisions that used this approach all denied plausibility and hence a patentable invention. This approach could mean applicants in the chemistry and life sciences fields may need to delay filing their applications until they have obtained enough data, or to file applications that have to seek narrower protection that more closely matches the data available at the time.
Equally, adopting the “no plausibility” approach of question 1 could lead to a free for all where patents are granted for inventions where the applicant merely speculated in its patent application and only subsequently made the invention. Intriguingly, the TBA seems to hint that this approach could be taken, provided that plausibility, i.e. that the invention had actually been made when the patent application had been filed, is considered in some other way. This could be under Article 83 EPC – whether the invention is disclosed sufficiently in the patent application – or even under Article 52(1) EPC – whether a speculative disclosure is even an invention.

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We await the Enlarged Board of Appeal’s decision with interest and will report on any significant developments as they arise. Meanwhile, if you would like to know more, please get in touch with Nick Lee, or your usual Kilburn & Strode advisor.

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