4. Evaluation of evidence
Neither in the EPC nor in the case law of the board of appeal are formal rules laid down for the evaluation of evidence. The Enlarged Board of Appeal has recalled that proceedings before the EPO are conducted in accordance with the principle of the free evaluation of evidence (G 1/12, OJ 2014, A114, citing G 3/97, OJ 1999, 245, point 5 of the Reasons; and G 4/97, OJ 1999, 270, point 5 of the Reasons).
Thus the EPO departments have the power 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 of the evidence available in the proceedings, and in the light of its conviction arrived at freely on the evaluation whether an alleged fact has occurred or not (see e.g. T 482/89, OJ 1992, 646; T 592/98, T 972/02; see also e.g. T 838/92, in which the board found there was a detailed and consistent body of evidence establishing that a device had been on sale before the patent application was filed).
However, the principle of free evaluation of evidence in EPO proceedings cannot go so far as to justify the refusal of a relevant and appropriate offer of evidence. Free evaluation of evidence means that there are no firm rules according to which certain types of evidence are, or are not, convincing. The deciding body must take all the relevant evidence before deciding whether or not a fact can be regarded as proven (T 474/04, OJ 2006, 129, citing G 3/97, OJ 1999, 245, point 5 of the Reasons). On the other hand, failure to submit evidence despite a board's request to do so may be viewed as a sign that the evidence would perhaps not confirm what has been claimed (see T 428/98).
Ruling on a refusal to hear witnesses, the board in T 1363/14 held that the principle of free evaluation of the evidence did not apply until after it had been taken and could not be used to justify not taking evidence offered. See also T 2238/15 and all decisions cited there; see also in this chapter III.G.2.2.
In J 14/19 (stay of the proceedings) the board explained that the EPO did not have any discretion when deciding on a stay of proceedings under R. 14(1) EPC. If a third party demonstrated that the requirements in R. 14(1) EPC were met, the proceedings for grant had to be stayed. This was not the same as deciding whether the factual requirements for a stay under R. 14(1) EPC were indeed met, which was not a matter of discretion but a question of evaluating the evidence. The latter saw the decision-making body examine the evidence to decide whether it was satisfied that the claimed facts were correct (see G 1/12, OJ 2014, A114). If it considered that a pivotal fact had not been established, it could order that more evidence be submitted under Art. 114(1) EPC.
- G 2/21
Headnote:
I. 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.
II. 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.