Zusammenfassung von EPC2000 Art 056 für die Entscheidung G0002/21 vom 23.03.2023

In G 2/21 the points of law referred to the Enlarged Board addressed two issues: whether the principle of free evaluation of evidence required a qualification in respect of certain evidence relied upon for a purported technical effect in the assessment of inventive step, and the relevant criteria to be applied with regard to such a technical effect (which the referring board in T 116/18 referred to as "ab initio plausibility", "ab initio implausibility" and "no plausibility"). The EBA found the principle of free evaluation of evidence could be defined in abstract and general terms as allowing and, by the same token, requiring a judicial body, like the boards of appeal, to decide according to its own discretion and its own conviction, by taking account of the entire content of the parties' submissions and, where appropriate, any evidence admissibly submitted or taken, without observing formal rules, whether a contested factual assertion is to be regarded as true or false. The only decisive factor was whether the judge was personally convinced of the truth of the factual allegation, which must be assessed on a case-by-case basis. The principle of free evaluation of evidence qualified as a universally applicable principle in assessing any means of evidence by a board of appeal. This was enshrined in the right of each party to proceedings under the EPC to give evidence in appropriate form pursuant to Art. 113(1) and 117(1) EPC. This principle was also known and applied in various EPC Contracting States with a civil law system. Notwithstanding the specific drafting of the referred questions, the EBA turned to referred questions two and three of the referral. It concluded that the term "plausibility" found in the case law of the boards of appeal and relied upon by the referring board in questions 2 and 3 of the referral, did not amount to a distinctive legal concept or a specific patent law requirement under the EPC, in particular under Art. 56 and 83 EPC. It held that the relevant standard for the reliance on a purported technical effect when assessing whether or not the claimed subject-matter involved an inventive step concerned the question of what the skilled person, with the common general knowledge in mind, would understand at the filing date from the application as originally filed as the technical teaching of the claimed invention. The technical effect relied upon, even at a later stage, needed to be encompassed by that technical teaching and to embody the same invention. The EBA stated that irrespective of the actual circumstances of a particular case, the guiding principles set out above should allow the competent board of appeal or other deciding body to take a decision on whether or not post-published evidence may or may not be relied upon in support of an asserted technical effect when assessing whether or not the claimed subject-matter involved an inventive step. For these reasons the EBA answered the referred questions of law as follows: 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. 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. The scope of the point of law defined by the referred questions and the reasons for the referring decision did not allow for or require that the referred questions be re- phrased by adding a reference to the issue of sufficiency of disclosure and Art. 83 EPC. In obiter dictum, however, the EBA observed that the notion of "plausibility" had been used in particular concerning second medical use and summarised examples of decisions in line with T 609/02. The scope of reliance on post published evidence was much narrower under sufficiency of disclosure. For the disclosure of the invention to be sufficiently clear and complete for it to be carried out by the person skilled in the art, the proof of a claimed therapeutic effect had to be provided in the application as filed.