Eddie Bishop

September 2021

In the present case the patentee wished to rely on documents dated after the filing date for their inventive step argument, stating that these documents in combination with data in the application as filed provided evidence of a synergistic effect between two compounds in the insecticide. The Board of Appeal determined that the post-published data was essential to determining whether the inventiveness of the claims and plausibility of the problem was solved over the whole scope. Both parties agreed with the Board that there was a need to refer the question of whether post-published data could be relied on to satisfy the plausibility requirement.

The questions expected to be referred are set out below:

If for acknowledgement of inventive step the patent proprietor relies on a technical effect and has submitted data or other evidence to proof such effect, such data or other evidence having been generated only after the priority or filing date of the patent (post-published data):

• Should an exception to the principle of free evaluation of evidence (see e.g. G 1/21 reasons 31) be accepted in that the post-published data must be disregarded on the ground that the proof of the effect rests exclusively on such post-published data?

• If the answer is yes (post published data must be disregarded if the proof of the effect rests exclusively on these data): can post-published data be taken into consideration if based on the information in the patent application the skilled person at the relevant date would have considered the effect plausible (ab initio plausibility)?

• If the answer to the first question is yes (post published data must be disregarded if the proof of the effect rests exclusively on these data): can post-published data be taken into consideration if based on the information in the patent application the skilled person at the relevant date would have seen no reasons to consider the effect implausible (ab initio implausibility)?

This referral is interesting as many consider the use of post-published documents being relied on for inventive step a settled issue, given established case law from the Boards of Appeal (see Case Law of The Boards of Appeal I-D, 4.6) on plausibility and post-filed evidence.

The preliminary opinion of the Board of Appeal in this case (T116/18), noted that whilst it is usually considered that post-published evidence can only be used to demonstrate an effect when that effect was already plausible at the filing date, the legal basis for this criterion has been questioned. The Board additionally provided details of several cases (T1422/12, T2371/13, T31/18) where post-published data has been considered despite a lack of plausibility of the relevant effect at the filing date.

The Board of Appeal went on to state that even if the plausibility criterion is to be applied, it is unclear where the burden of proof lies – does the proprietor have to demonstrate ab-initio plausibility or is it the opponent’s responsibility to show “ab-initio implausibility”. The further question then arises of, if the burden of proof lies with the opponent, what evidence can be used to show implausibility? This appears to be the reason for the third referral question, which at first glance may appear to be a simple rewording of the second question.

The written decision of the Board of Appeal is now awaited, which is expected to confirm the referral.

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