11. Arguments and evidence submitted by the applicant 

The arguments and evidence considered by the examiner when assessing inventive step can be either taken from the originally-filed patent application or submitted by the applicant during the subsequent proceedings (see G‑VII, 5.2 and H‑V, 2.2 and H-V, 2.4).

When an effect is cited in support of inventive step, it must be checked that the effect in question is encompassed by the technical teaching and embodied by the same originally disclosed invention (see G‑VII, 5.2).

However, care must be taken whenever new effects are cited in support of inventive step. Such a new effect can be taken into account only if the skilled person, having the common general knowledge at the effective filing date in mind, and based on the application as originally filed, would derive it as being encompassed by the technical teaching and embodied by the same originally disclosed invention (G 2/21, Headnote II).

Any evidence submitted to prove a purported technical effect that can be taken into account for the assessment of inventive step is to be considered in accordance with the principle of free evaluation of evidence. It cannot be disregarded solely on the ground that it is post-published (G 2/21).

Example of a new an effect relied on at a later stage:

The invention as filed relates to a pharmaceutical composition having a specific activity. At first sight, having regard to the relevant prior art, it would appear to lack inventive step. The applicant later submits new evidence showing that the claimed composition exhibits an unexpected advantage in terms of low toxicity. It is then permissible to reformulate the technical problem by including the aspect of toxicity, since pharmaceutical activity and toxicity are related in the sense that the skilled person would always contemplate them together.

Reformulating the technical problem may or may not lead to an amendment of the statement of the technical problem in the description or to its insertion into the description. Any such amendment is only allowable if it satisfies the conditions listed in H‑V, 2.4. In the above example of a pharmaceutical composition, neither the reformulated problem nor the information on toxicity could be introduced into the description without infringing Art. 123(2).