The technical effect of certain features in a claim is a cornerstone in the assessment of inventive step, in particular if it turns out to be surprising. However, it is sometimes under dispute to what extend the technical effect is caused by the feature in question or if the feature is sufficient to cause the technical effect. This can be settled by submitting submitted evidence, such as experimental data, to prove such an effect. The question arises how to deal with evidence not having been public before the filing date of the patent in suit and having been filed after that date (post-published evidence):
The Technical Board of Appeal 3.3.02 has referred the following questions to the Enlarged Board of Appeal for decision.
- Should an exception to the principle of free evaluation of evidence (see e.g. G 3/97, Reasons 5, and G 1/12, Reasons 31) be accepted in that post-published evidence must be disregarded on the ground that the proof of the effect rests exclusively on the post-published evidence?
- If the answer is yes (the post-published evidence must be disregarded if the proof of the effect rests exclusively on this evidence), can the post-published evidence be taken into consideration if, based on the information in the patent application in suit or the common general knowledge, the skilled person at the filing date of the patent application in suit would have considered the effect plausible (ab initio plausibility)?
- If the answer to the first question is yes (the post-published evidence must be disregarded if the proof of the effect rests exclusively on this evidence), can the post-published evidence be taken into consideration if, based on the information in the patent application in suit or the common general knowledge, the skilled person at the filing date of the patent application in suit would have seen no reason to consider the effect implausible (ab initio implausibility)?