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Post-published data to support an inventive step: possible Enlarged Board of Appeal referral

Posted: August 13, 2021

A new referral is expected to the Enlarged Board of Appeal – the highest level of independent judicial authority at the European Patent Office – on the use of post-published data as the basis for supporting inventive step.

 Background

The patent in issue (EP2484209B1) is owned by Sumitomo Chemical Company (Sumitomo) and relates to insecticide compositions comprising at least two types of compound.  Claim 1 covers many possible combinations of different compounds.  The patent was opposed by Syngenta and subsequently maintained as granted after first instance proceedings before the Opposition Division.  In coming to its decision the Opposition Division took into account post-published data (i.e. data published after the effective date of the patent) submitted by Sumitomo during the opposition proceedings.  Sumitomo argued that the post-published data proved there was a synergistic technical effect between the combinations of different compounds covered by the claim, whereas Syngenta argued that the post-published data should not have been admitted to the proceedings.  In arguing their point, Syngenta submitted that post-published data can only be relied upon to support inventive step if it is already credible from the disclosure in the patent that the problem is actually solved.  Syngenta’s stance was that the skilled person would not believe for a moment that the teachings of the patent made it in any way plausible or credible that a synergistic effect would have arisen in all of the possible combinations of compounds covered by the claim.

Syngenta appealed the decision.

Board of Appeal

The Board of Appeal arrived at the preliminary view that there is divergence in case law as to the criteria that should be applied in determining whether or not post-published data should be admitted to opposition proceedings.  At one end of the spectrum, the Board of Appeal in T 1329/04 stated that a precondition for taking into account post-published data is that it was already plausible at the filing date that the claimed technical effect was obtained (the “ab-initio plausibility criterion”).  However, the legal basis for the ab-initio plausibility criterion has been questioned in other Board of Appeal decisions.  For example, at the other end of the spectrum, the Board of Appeal in T 2371/13 stated that disregarding post-published data would be incompatible with the problem and solution approach.

Given that the Board of Appeal in EP2484209B1 considers the post-published data as crucial to determining the inventiveness of the claims and the plausibility that the problem has been solved over the full scope of the claim, it has decided that this issue merits consideration by the Enlarged Board of Appeal.

Therefore, the Board has drafted the following provisional questions for referral to the Enlarged Board of Appeal:

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):

1. Should an exception to the principle of free evaluation of evidence (see e.g. G 1/12 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?
2. 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)?
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 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 reason to consider the effect implausible (ab initio implausibility)?

Conclusion

The appeal proceedings will continue in writing to allow the parties to comment on the provisional questions.  It is anticipated that the written decision will refer the finalised questions to the Enlarged Board of Appeal.

The outcome of the referral may assist applicants in deciding how much supporting information to include in new patent applications.  Until we have clarification from the Enlarged Board of Appeal, it is advisable to include as much information as possible at the time of filing with respect to technical advantages, and this includes experimental data in addition to examples showing that the invention works over the full scope of the claim.