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The use of post-published data in the assessment of inventive step – referral to the Enlarged Board of Appeal

Posted: February 23, 2022

A recent case before the Board of Appeal (T 0116/18) has highlighted a divergence in law regarding the plausibility requirement of post-published data used to support an inventive step argument. The Board of Appeal has referred the case to the Enlarged Board of Appeal to provide clarity on this divergence.

 

Previous use of post-published data

According to one standard, an applicant or patentee can rely on post-published data to support their inventive step argument. A previous decision by the Board of Appeal (T 1329/04) introduced the requirement that post-published data can be considered only if, given the application as filed and the common general knowledge at the filing date, the skilled person would have had reason to assume the technical effect to be achieved. As highlighted by the Board of Appeal, it seems to have been of crucial importance for the Board in T 1329/04 to be able to ensure that the patentee was actually in possession of the invention at the time of filing to prevent purely speculative claiming. This line of case law is referred to as the “ab initio plausibility” standard.

However, the case law diverges and there are two other standards that can be followed regarding post-published data.

In a second line of case law, post-published evidence can only be disregarded if the skilled person would have had legitimate reasons to doubt that the technical effect would have been achieved on the filing date of the patent. Thus, with this line of case law, post-published data must always be considered if the technical effect is not implausible. This line of case law is referred to as the “ab initio implausibility” standard.

In a third line of case law, the concept of plausibility is rejected altogether. This line of case law is referred to as the “no plausibility” standard.

 

The case underlying the referral

 In the present case, the patent relates to an insecticide composition that comprises thiamethoxam and a second compound represented by a Markush formula (called formula 1a in the patent).

The patentee filed post-published data to support their assertion that the patent provided a synergistic effect from combining thiamethoxam with compounds according to formula 1a. In light of the post-published data, the Opposition Division accepted that the claims were inventive and went on to reject the opposition.

During the appeal, the appellant contended the post-published data and requested that the post-published data was not admitted.

 

Referring to the Enlarged Board of Appeal

During the assessment of inventive step, the Board of Appeal noted that questions needed to be referred to the Enlarged Board of Appeal on whether evidence not public before the filing date of the patent and filed after that date (post-published data) can be taken into consideration in view of the current case law.

 During the Oral Proceedings, the Board of Appeal formulated three questions that are likely to reflect the questions referred to the Enlarged Board of Appeal. The three questions are set out below.

If, for acknowledgement of inventive step, a 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, and having been filed after that date (post-published data):

1.  Should an exception to the principle of free evaluation of evidence be accepted in that post-published data must be disregarded on the ground that the proof of the effect rests exclusively on the post-published data?
2. If the answer is yes (post-published data must be disregarded if the proof of the effect rests exclusively on this data), can the post-published data be taken into consideration if based on the information in the patent application or the common general knowledge, the skilled person at the filing date of the patent application would have considered the effect plausible (ab initio plausibility)?
3. If the answer to the first question is yes (post published data must be disregarded if the proof of the effect rests exclusively on this data), can the post-published data be taken into consideration if, based on the information in the patent application or the common general knowledge, the skilled person at the filing date of the patent application would have seen no reason to consider the effect implausible (ab initio implausibility)?

The outcome from the referral may impact the decision made by an applicant-to-be upon filing their patent application. The applicant-to-be may have to decide between (a) obtaining an early filing date and including less data in the patent application, or (b) obtaining a later filing date but including more data in the patent application.