Key points
- The Enlarged Board provided a comprehensive analysis of the principle of the free evaluation of evidence in G 2/21.
- "In G 1/12 ... the Enlarged Board
recalled that proceedings before the EPO are conducted in accordance with the
principle of free evaluation of evidence."
- r.30: "Said principle can 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 [whether a contested factual assertion is to be regarded as true or false] 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 []"
- Admissibly submitted refers to evidence submitted by the parties. Evidence that is taken is e.g. the hearing of a witness by the EPO.
- r.31: "[This principle] does not mean that this evaluation of evidence may be arbitrary, rather the evidence must be assessed comprehensively and dutifully. The only decisive factor is whether the judge is personally convinced of the truth of the factual allegation, i.e. how credible the judge classifies a piece of evidence. To do this, the judge must put all the arguments for and against a factual statement in relation to the required standard of proof. In doing so, the judge remains bound by the laws of the logic and by probability based on experience. The reasons that led the judge to be convinced of the correctness or incorrectness of a contested allegation as to fact are to be set out in the decision."
- r.32: "The principle of free evaluation of evidence may not be used to disregard evidence per se insofar as [the evidence] is admissibly submitted and relied upon by a party in support of an inference which is challenged and is decisive for the final decision."
- As I noted in my post about T 1418/17, the principle of free evaluation of evidence means that there are no strict rules for the evaluation of evidence, i.e. no such rules like a rule that the testimony of three witnesses is binding evidence, as was the case in medieval law (Roman-canonical law). “The [medieval] formal theory of evidence that grew out of this hierarchical evaluation [of evidence] left no option for the judge: [the judge] was required to be convinced after the designated number of witnesses had testified concordantly” (link). “The principle of free evaluation of the evidence by the judge generally dates from the French Revolution. The French introduced the concept of the judge’s conviction intime (inner, deep-seated conviction) in contrast to rules of formal evidence that prescribed exactly when the evidence amounted to proof” (link to https://www.britannica.com/topic/evidence-law).
- See also T 3120/19: "The principle of free evaluation of evidence is only applicable after the evidence has been taken and cannot be used to justify not taking evidence that has been offered, cf. T 0474/04"; the Board here considers the types of evidence that are "taken", e.g. witness hearing, the inspection of samples, etc.
- The Enlarged Board: "Disregarding [certain types of evidence] as a matter of principle would deprive the party submitting and relying on such evidence of a basic legal procedural right generally recognised in the EPC Contracting States and enshrined in Articles 113(1) and 117(1) EPC" (r.32)
- The Board then reviews the existing case law. This parts includes a few general statements.
- "Parties can freely choose the evidence they wish to submit, whereby the kinds of evidence listed in Article 117(1) EPC are merely examples"
- "Articles 113(1) and 117(1) EPC embody a basic procedural right generally recognised in the EPC contracting states, i.e. the right to give evidence in appropriate form and the right to have that evidence heard (see T 1110/03). A decision should discuss the facts, evidence and arguments which are essential to the decision in detail"
- "If the evidence offered as proof of contested facts essential to the settlement of the dispute is decisive, the body hearing the case must, as a rule, order that it be taken into account (see T 474/04). All appropriate offers of evidence made by the parties should be taken up (see T 329/02)."
- Note, to "offer" a witness is actually a formal request of a party to hear a witness (as I understand it), with the particular feature that the witness is "on the side" of the party making the request (see here) To " offer" evidence is a term mostly used for jury trial where a party needs permission from a judge to present evidence (a document, or a witness) to the jury.
- Late-filed evidence can be held inadmissible, and late-filed evidential requests (e.g. to hear a witness) can probably be denied under Article 114 EPC.
- "If, however, post-published evidence is considered to lack prima facie relevance or is not required for the decision on the issue in question of the case at hand, there is no need for it to be taken into account by the competent board of appeal"
- This applies to any kind of evidence; I think the Board has to give reasons in the decision why a (timely filed and formally admitted) piece of evidence lacks relevance for the contested factual assertion at issue.
- A similar case is if a patent publication is filed as evidence of common general knowledge: the Board will briefly consider the evidence and normally reject the evidence on the merits as irrelevant.
- In this sense, post-published evidence will often be of limited value for proving what "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" [at the filing date], cf. headnote 2 of G 2/21. However, there might be exceptions, e.g. a declaration of a technical expert as to what the skilled person would understand.
27 The first referred question
concerns the point of law whether a board of appeal is required to deviate from
the principle of free evaluation of evidence in respect of post-published
evidence submitted as the exclusive support of a purported technical effect
when assessing inventive step.
28 The
structure of the three referred questions and their interdependency with each
other suggest a specific understanding of the principle of free evaluation of
evidence by the referring board. The reasoning in point 13.7.3 of the
- 30 - G 0002/21
Reasons of the referring
decision appears to presume that the principle of free evaluation of evidence
does not directly allow for, but conflicts with what the referring board
describes as standards for the reliance on certain evidence for a purported
technical effect. The referring board, though without discussing this further,
raises the point that it is "not immediately clear what could be the legal
basis for preventing the patent proprietor from relying on a particular type of
evidence of a fact relevant to the outcome of the proceedings. Likewise, it is
not clear on what basis a board would be prohibited from taking into account
evidence it finds convincing and decisive."
29 Neither the EPC nor the
case law of the boards of appeal lay down formal rules for the evaluation of
evidence. In G 1/12 (point 31 of the Reasons), referring to G 3/97 (point 5 of
the Reasons) and to G 4/97 (point 5 of the Reasons), the Enlarged Board
recalled that proceedings before the EPO are conducted in accordance with the
principle of free evaluation of evidence.
30 Said
principle can 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.
31 It
does not mean that this evaluation of evidence may be arbitrary, rather the
evidence must be assessed comprehensively and dutifully. The only decisive
factor is whether the judge is personally convinced of the truth of the factual
allegation, i.e. how credible the judge classifies a piece of evidence. To do
this, the judge must put all the
- 31 - G 0002/21
arguments for and against a
factual statement in relation to the required standard of proof. In doing so,
the judge remains bound by the laws of the logic and by probability based on
experience. The reasons that led the judge to be convinced of the correctness
or incorrectness of a contested allegation as to fact are to be set out in the
decision.
32 The principle of free
evaluation of evidence may not be used to disregard evidence per se insofar as it is admissibly
submitted and relied upon by a party in support of an inference which is
challenged and is decisive for the final decision. Disregarding it as a matter
of principle would deprive the party submitting and relying on such evidence of
a basic legal procedural right generally recognised in the EPC Contracting
States and enshrined in Articles 113(1) and 117(1) EPC (see also T 1110/03,
point 2 of the Reasons, T 1797/09, point 2.9 of the Reasons, T 419/12, point
2.1.3 of the Reasons, and T 2294/12, point 1.1.3 of the Reasons).
33 This definition, which
applies likewise to decisions taken by the administrative departments of the
EPO in patent granting procedures, is in conformity with the established
jurisprudence of the boards of appeal (see CLB, 10th edition, III.G.4.1, and
the decisions therein) and finds support in patent law commentaries (see Unland
in: Benkard, EPU, Art. 117, no. 39; Bidhler in Singer/Stauder/Luginbidhl, EPU,
Art. 117, no. 23; Schulte, Patentgesetz, introduction, no. 155; Visser's
Annotated European Patent Convention, Art. 117, point 2, last paragraph, all
with further references).
34 The deciding bodies under
the EPC have the power and the duty to assess whether the alleged facts are
sufficiently established on a case-by-case basis. Under the principle of free
evaluation of evidence, the respective body takes its decision on the basis of
all the relevant evidence available in the proceedings, and in the light of its
conviction
- 32 - G 0002/21
arrived at freely when
evaluating whether an alleged fact is or is not to be regarded true and proven.
Free evaluation of admissibly filed evidence relevant for deciding the case at
hand means that there are no firm rules according to which certain types of
evidence are, or are not, convincing.
Existing jurisprudence of the Enlarged Board of Appeal
35
There is no decision or opinion of the Enlarged Board dealing directly with the
principle of free evaluation of evidence in support of an alleged technical
effect. The Enlarged Board has addressed the principle of free evaluation of
evidence only in different contexts, i.e. the admissibility of an opposition to
a European patent filed on behalf of a third party (consolidated G 3/97 and G
4/97) and the admissibility of an appeal filed by a person appearing at first
sight not to have standing to do so (G 1/12).
36 In
consolidated decisions G 3/97 and G 4/97 the Enlarged Board held points 1(a), 1(b)
and 2 of the Order of decision G 3/97, and
points 3(a), 3(b) and 4 of the Order of decision G 4/97, emphasis added):
"An
opposition is not inadmissible purely because the person named as opponent
according to Rule 55(a) EPC is acting on behalf of a third party.
Such
an opposition is, however, inadmissible if the involvement of the opponent is
to be regarded as circumventing the law by abuse of process.
In determining whether the law has
been circumvented by abuse of process, the principle of the free evaluation of
evidence is to be applied. The burden of proof is to be borne by the person alleging that
the opposition is inadmissible. The deciding body has to be satisfied on the
basis of clear and convincing evidence that the law has been circumvented by
abuse of process."
37 In G 1/12 the Enlarged
Board held (Order with added emphasis):
"The answer to
reformulated question (1) - namely whether when a notice of appeal, in
compliance with Rule 99(1)(a)
- 33 - G 0002/21
EPC, contains the name and the address of
the appellant as provided in Rule 41(2)(c) EPC
and it is
alleged that the identification is wrong due to an error, the true intention
having been to file on behalf of the legal person which should have filed the
appeal, is it possible to correct this error under Rule 101(2) EPC
by a request
for substitution by the name of the true appellant - is yes, provided the
requirements of Rule 101(1) EPC have been met.
Proceedings
before the EPO are conducted in accordance with the principle of free
evaluation of evidence. This also applies to the problems under consideration
in the present referral.
In cases of an error in the appellant's name, the general
procedure for correcting errors under Rule 139, first sentence, EPC is available under the conditions established
by the case law of the boards of appeal."
Evaluation of evidence before the boards of appeal
38 Article 117 EPC provides for the submission
of evidence in the administrative proceedings before the receiving section, the
examining and opposition divisions and the legal division as well as in the
judicial proceedings before the boards of appeal (see CLB, 10th edition, III.G.1).
39 The
boards of appeal have addressed multiple issues of admissibility and taking of
evidence in their case law. In addition, they have elaborated specific
principles governing the evaluation of evidence, the standard of proof and the
allocation of the burden of proof in order to ensure that EPO proceedings
are conducted in a fair and consistent manner (see CLB, III.G.1, 10th
edition, and the decisions therein).
40 In accordance with the
principle of free evaluation of evidence, any kind of evidence, regardless of
its nature, is admissible (see T 482/89 and T 558/95). Parties can freely
choose the evidence they wish to submit, whereby the kinds of evidence listed
in Article 117(1) EPC
are
merely examples (see T 543/95 and T 142/97).
- 34 - G 0002/21
41
Articles 113(1) and 117(1) EPC embody a basic procedural right generally
recognised in the EPC contracting states, i.e. the right to give evidence in
appropriate form and the right to have that evidence heard (see T 1110/03). A
decision should discuss the facts, evidence and arguments which are essential
to the decision in detail (see e.g. T 278/00, see also CLB, 10th edition,
III.K.3.4.4 b), and the decisions therein).
42 Whether a fact can be
regarded as proven has to be assessed by the competent deciding body hearing
the case having taken all the relevant evidence into consideration (T 474/04
and T 545/08 citing G 3/97, point 5 of the Reasons). All the means of giving or
obtaining evidence covered by
Article 117(1) EPC are subject
to the discretion of that body, which will order it to be taken only if it
considers this necessary (T 798/93). If the evidence offered as proof of
contested facts essential to the settlement of the dispute is decisive, the
body hearing the case must, as a rule, order that it be taken into account (see
T 474/04). All appropriate offers of evidence made by the parties should be
taken up (see T 329/02).
43 If, however,
post-published evidence is considered to lack prima facie relevance or is not required for the decision on the
issue in question of the case at hand, there is no need for it to be taken into
account by the competent board of appeal (e.g. T 122/18 and T 1343/19 evidence
not prima facie relevant; T 517/16, T
2923/18, T 2029/19, T 2963/19,
T 3109/19: evidence not required or relevant; and T
2730/16: alleged technical effect no longer contested).
44 The
principle of unfettered consideration and evaluation of the evidence does not
apply until after an offer of evidence has been taken up and cannot be used to
justify not taking evidence offered into account (see T 1363/14, T 2238/15).
- 35 - G 0002/21
45 To fulfil its power to
assess whether the alleged facts are sufficiently established on a case-by-case
basis, the competent deciding body takes its decision on the basis of all the
evidence available in the proceedings, and in the light of its conviction
arrived at freely on the evaluation of whether an alleged fact has occurred or
not (see e.g. T 482/89, T 838/92, T 592/98, T 972/02, and further examples and
references in CLB, 10th edition, III.G.4.1).
46 Even though different
concepts as to the standard of proof have been developed in the case law of the
boards of appeal, they all have in common that a judgement is to be made on the
basis of the application of the principle of free evaluation of evidence (see
CLB, 10th edition, III.G.4.3, and the decisions therein).
Principle of free evaluation of evidence in the
Contracting States
47 Article 117(1) EPC provides
for the means of giving or obtaining evidence, and Article 117(2) EPC in
connection with Rules 4, 117 to 124, and 150 EPC regulate the procedure for
taking such evidence. However, there are no explicit procedural provisions in
the EPC on the evaluation of evidence.
48 Hence, principles of
procedural law generally recognised in the Contracting States of the EPC are to
be taken into account in accordance with Article 125 EPC.
49 It appears that the
principle of free evaluation of evidence is known and applied in a number of
Contracting States with a civil law system.
- 36 - G 0002/21
Switzerland
50 The
principle of free evaluation of evidence is also acknowledged in Switzerland.
The Swiss Code of Civil Procedure (Zivilprozessordnung) stipulates in Article
157 that the court forms its conviction after free evaluation of the evidence
("Das Gericht bildet sich seine Uberzeugung nach freier Wiirdigung der
Beweise.") which was interpreted by the Swiss Federal Supreme Court as a
ban on fixed rules of evidence (see decision 5A 250/2012 of 18 May 2012, point
E. 7.4.1 with further references). In its decisions, the Swiss Federal Patent
Court refers to said provision (see Article 27 Patent Court Act (Bundesgesetz
caber das Bundespatentgericht - Patentgerichtsgesetz).
Germany
51 For Germany, the
principle of free evaluation of evidence is provided for both in the Patent Act
(§ 93(1) Patentgesetz) and in the Code of Civil Procedure (§ 286
Zivilprozessordnung). According to the former, the judge shall decide according
to its independent conviction gained as an overall result of the proceedings
("Das Patentgericht entscheidet nach seiner freien, aus dem Gesamtergebnis
des Verfahrens gewonnenen Oberzeugung.").
France
52
French proceedings are in principle also governed by the principle of a free
evaluation by the judge of the evidence submitted by the parties
("appreciation souveraine par le juge des elements de preuve qui lui sont
soumis"; see J. Passa, Traite de droit de la propriete intellectuelle, Tome
2, Brevets d'invention, protections voisines, 2013,
- 37 - G 0002/21
point 151, pages 202 and 203;
J. Schmidt-Szalewski, Fasc. 4260 of Jurisclasseur Brevets, paragraph 48
"appreciation de la preuve des anteriorites"). Regarding novelty
however, the date, the content and the accessibility to the public of a
document allegedly disclosing the invention must be certain.
The
Netherlands
53 In the Netherlands, Article 152(2) of the Dutch Code
of Civil Procedure (Wetboek van Burgerlijke Rechtsvordering) regulates a free
evaluation of evidence, unless the law provides otherwise ("De waardering
van het bewijs is aan het oordeel van de rechter overgelaten, tenzij de wet
anders bepaalt."). This exception concerns rules
about the conclusive evidential value of evidence. The court is obliged to
accept as true certain forms of evidence; however such evidence is also subject
to a rebuttal supported by evidence. Although the Dutch legal system does not
provide methodological guidance for judges on the free assessment of evidence
the definition by C.H. van Rhee appears to be an accepted common definition of
the principle of the free assessment of evidence in Dutch civil procedural law,
according to which the judge decides on proof according to his "intimate
conviction", but within the boundaries set by the parties in their
statements of facts.
United Kingdom (England and
Wales)
54 In the United Kingdom
with its common law system, there is no general principle of free evaluation of
evidence. Evidence in relation to inventive step (obviousness) is considered a
"jury-type question" to be decided on the facts of the particular
case at hand (see Terrel on the Law of Patents by C. Birss et al, 19th edition,
2020, pages 390-400 at [12177]-[12-212], with many examples and references).
Two types
- 38 - G 0002/21
of evidence were defined and
distinguished by the Court of Appeal in Molnlycke v Procter & Gamble [1994]
R.P.C. 49 at [112]: primary evidence (expert evidence) and secondary evidence
(all other evidence), whereby in relation to obviousness for which an objective
test is applied the primary evidence seems to be most relevant, although
secondary evidence may also be treated "decisive in a proper case"
(Accord v Medac [2016] EWHC 24 (Pat) at [116]; see also Schlumberger v EGMS
[2010] EWCA Civ 819 at [84]-[85]; Hospira UK Ltd, v Cubist Pharmaceuticals Ltd
[2016] EWHC 1285 (Pat); Positec Power Tools Europe Ltd v Husqvarna AB [2016]
EWHC 1061 (Pat); Cantel Medical (UK) Ltd v Arc Medical Design Ltd [2018] EWHC
345 (Pat)).
Intermediate conclusion
55 The Enlarged Board
concludes from these considerations that the principle of free evaluation of
evidence qualifies as a universally applicable principle in assessing any means
of evidence by a board of appeal.
56
Hence, 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.
[...]
Concluding considerations
88 As already mentioned in
points 55 to 59 above, the proceedings under the EPC are governed by the
principle of free evaluation of evidence which is also known in various EPC
Contracting States with a civil law system.
89 The principle of free
evaluation of evidence depicts a universally applicable principle of both
procedural and substantive law in assessing any means of evidence submitted by
a party in proceedings under the EPC, be it an administrative department of the
EPO or a board of appeal as the competent judicial body reviewing decisions of
such administrative departments pursuant to Article 106(1) EPC.
90 As
the principle of free evaluation of evidence is enshrined in the right of each
party to proceedings under EPC to give evidence in appropriate form pursuant to
Articles 113(1) and 117(1) EPC, it may not be used to disregard evidence per se
- 66 - G 0002/21
insofar as it is submitted and
relied upon by a party in support of an inference which is challenged as to its
plausibility and is decisive for the final decision.
91 Hence, evidence submitted
by a patent applicant or proprietor to prove a purported 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.
Order
For these reasons it is decided that the questions
of law referred to the Enlarged Board of Appeal are answered 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.
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