EPO Decision On the Use of Post-Filing Data

At the European Patent Office (EPO) the non-obviousness of an invention is established by application of the problem-solution approach.  This approach takes up an analysis of what benefit of benefits are being delivered by the invention and requires one to identify a technical effect that is achieved by the claimed invention.  The issue of whether there is a technical effect is core to whether there is an invention at all, and then, as a related issue, whether that invention is sufficiently disclosed in the application as filed. 

Sometimes an inventor cannot reliably establish that a particular technical effect is being delivered until certain experiments are undertaken and the data analyzed.  Often these experiments occur well after filing of the application and as a consequence these experiments and the helpful data they provide are absent from and not disclosed in the application as filed.

The EPO has gone back and forth on whether post-filing experiments, and even more broadly, supportive data of any type, may be admitted into proceedings to establish a technical effect.

In G2/21 published 23 March 2023 the EBoA ruled that:

1. Evidence submitted by a patent 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. (emphasis added)

2. 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. (emphasis added)

In reaching point 1, the EBoA considered the existing practice of the free evaluation and use of evidence.  The EBoA found that the EPO has a broad ability to consider all forms of evidence and that this was, essentially, a principle of fair proceedings at the EPO.  The EBoA found that a per se prohibition against using post-filing evidence for technical effect would be an exception to this general principle.  The EBoA in point 1, opted essentially to refuse such an exception and to keep in place the evidentiary practice of allowing the EPO the ability to broadly take in, consider and apply evidence.

As to point 2, the EBoA ruled that whether evidence showing a particular technical effect may be used to show that a claimed invention is sufficiently disclosed is to be determined on a case-by-case basis.  The analysis in each case will turn on whether the applicant or patentee can show that the skilled person could derive the technical effect from the technical teachings, the disclosure and the prior art, in place at the time of filing. The EBoA leaves it that this is a point for argument and judgment.