Patent owners can rely on evidence of inventive step published after a patent application has been filed but only where a technical effect is evident in the original filing, the EPO’s Enlarged Board of Appeal ruled today, March 23.
The key question in the case, known as G2/21, was to what extent patent owners and applicants can rely on evidence published after the filing of a patent application.
According to the EBoA, the relevant standard for assessing inventive step was what the skilled person would have understood on the filing date as the application’s “technical teaching”.
The decision arose after Swiss agricultural science firm Syngenta, represented by law firm HGF, brought a challenge against a patent (EP 2 484 208) owned by Japanese firm Sumitomo.
Syngenta challenged the patent’s validity based on inventive step, insufficiency of disclosure, added subject matter, and a lack of novelty.
The EPO’s opposition division rejected the challenge, leading to an appeal before the office’s Technical Boards of Appeal (TBA).
In October 2021, the TBA referred three questions on plausibility and the use of post-published evidence to the EBoA.
In a statement sent exclusively to Managing IP, Filip de Corte, Syngenta’s head of IP for crop protection, and HGF said the board had balanced the interests of patentees and third parties.
“While post-published evidence may be admissible in accordance with the principles of the free evaluation of evidence, a patentee will need to show that the technical effect itself was evident in the application as originally filed.
“This highlights that the disclosure contained in the patent application is crucial to the question of what technical effect can be relied upon by a patentee faced with new prior art,” the statement added.
The EBoA didn’t make a definitive judgment on “plausibility”, despite this term being used in the referral and by the TBA.
According to the board, plausibility didn’t amount to a distinctive legal concept under the European Patent Convention but was a “generic catchword”.
