New referral expected to the EBA on the use of post-published data to support inventive step

A Board of Appeal is about to refer questions to the Enlarged Board of Appeal (EBA) on the ability of a patentee to rely on post-published evidence to support the inventive step of a claim, and particularly to support the plausibility that the technical problem has been solved over the full scope of the claim. The referral (expected to be G2/21) will arise from the opposition proceedings for EP2484209. The patent claims insecticides, and was opposed by Syngenta. 

Chilo suppressalis ~
Target of insecticides

The decision to refer the question of post-published evidence to the EBA is provided in the minutes of oral proceedings of the appeal case (T 0116/18). The patentee in the case wished to rely on documents dated after the filing date of the patent for their inventive step argument. The patentee submitted that the documents, together with data in the application as filed, corroborated that the claimed components of the insecticide had a synergistic effect. The Board of Appeal considered the post-published data as crucial to determining the inventiveness of the claims and the plausiblity that the problem had been solved over the full scope of the claim. 

Both parties agreed with the Board of Appeal that there was a need to refer the question of whether post-published data could be relied on to satisfy the requirement of plausibility of a technical effect. The Board of Appeal therefore proposed to the parties the following provisional questions for a referral to the EBA: 

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 1/21 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?

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 reasons to consider the effect implausible (ab initio implausibility)?

(emphasis of the Board)

The proceedings in the case now continue in writing to allow the parties involved an opportunity to comment on the referred questions. At oral proceedings, the Opponent wished the effective date in the question to be more clearly defined (is it the priority date or the filing date that is most crucial for determining plausiblity?). The patentee suggested that an additional question should be included, addressing the burden of proof of the occurrence or absence of the technical effect. We thus await the written decision from the Board of Appeal finalising the referred questions.