Sean Hutchinson

December 2023

Our Headnote

It seems that the era of “plausibility” is over, and there may now be little, if any, consideration given to whether the technical effect was plausible / not implausible in view of the application as filed.

Instead, emphasis is now placed on the “broadest technical teaching” of the application as filed and whether the technical effect demonstrated by post-filed evidence and relied on by the applicant/proprietor is both “encompassed” and “embodied” by that teaching.

Overall, the opportunity for supporting inventive step using post-filed evidence appears to now be greater than ever before.

Background

In March 2023, the EPO’s Enlarged Board of Appeal issued its decision in G 2/21. Many had been hoping that the Enlarged Board would clarify the circumstances, if any, under which applicants of European patent applications and proprietors of European patents are permitted to rely on data/evidence published after the filing date (“post-filed evidence”) to demonstrate that the claimed subject matter achieves a technical effect relied upon in support of inventive step. However, the Enlarged Board’s decision instead caused quite a stir, setting out these rather ambiguous answers to the questions referred to it:

“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.”

Whilst order no. 1 confirmed that post-filed evidence can be relied upon under certain circumstances, there has been a lot of debate about what order no. 2 prescribes those circumstances to be. Fortunately, the Board of Appeal in the case underpinning the referral (T 116/18) has recently issued a decision in which the meaning of order no. 2 has been explored in detail, thus providing a very useful insight into how G 2/21 is likely to be applied by the EPO moving forwards. This decision is likely to be of great interest to those involved in cases before the EPO where post-filed evidence is at issue.

The Two Requirements

In T 116/18, the Board held that order no. 2 of G 2/21 imposes two distinct requirements which must both be fulfilled for an applicant/proprietor to be able to rely on post-filed evidence in support of inventive step:

(i)         the technical effect the post-filed evidence purports to demonstrate must be encompassed by the technical teaching, and

(ii)        the technical effect the post-filed evidence purports to demonstrate must be embodied by the same originally disclosed invention.

The Board then set about clarifying what these two requirements really mean. To do this, the Board started by analysing the meaning of “the technical teaching” and “the same originally disclosed invention”. The Board noted that “technical teaching” is not defined in the EPC but that Rule 42(1)(c) EPC appears to define an “invention” as a solution to a technical problem. The Board went on to note that previous decisions of the Enlarged Board of Appeal have held that an “invention” necessarily includes a technical teaching, and thus held that “the technical teaching” and “the same originally disclosed invention” in order no. 2 of G 2/21 must refer to the same thing.

The Board then considered the purpose of the Enlarged Board’s orders in G 2/21, ultimately holding that the Enlarged Board had restricted the circumstances under which post‑filed evidence could be relied upon for inventive step. The restriction is to prevent so-called “speculative patenting”, i.e. the filing of a patent application for an invention the applicant thinks may be patentable but does not actually devise until after the filing date. The Board also considered that broad patent claims are more likely to have been speculative at the filing date than narrow claims.

With the above in mind, the Board held that the “technical teaching” and the “same originally disclosed invention” referred to by the Enlarged Board should be interpreted as meaning “the broadest technical teaching of the application as filed…with regard to the claimed subject matter”. In other words, the Board held that requirements (i) and (ii) should be interpreted as meaning:

(i)         the technical effect the post-filed evidence purports to demonstrate must be encompassed by the broadest technical teaching of the application as filed with regard to the claimed subject matter, and

(ii)        the technical effect the post-filed evidence purports to demonstrate must be embodied by the broadest technical teaching of the application as filed with regard to the claimed subject matter.

The Board then considered what criteria need to be fulfilled to meet each of these two requirements, noting that both requirements must be met for the applicant/proprietor to be permitted to rely on its post-filed evidence.

Interpreting Requirement (I)

Regarding requirement (i), the Board held that the technical effect is to be considered “encompassed” by the broadest technical teaching of the application as filed with regard to the claimed subject matter only if the skilled person, considering the application as filed in the context of their common general knowledge at the filing date, would recognise that the technical effect the post‑filed evidence purports to demonstrate is “necessarily relevant” to the claimed subject matter.

From this, it would appear that there needs to be some sort of connection between the disclosure of the application as filed (read in the context of the skilled person’s common general knowledge) and the technical effect relied upon by the applicant/proprietor. However, the Board also held that requirement (i) does not mean a “positive verbal statement”, i.e. an explicit statement, that the claimed subject matter achieves the technical effect is needed in the application as filed for the post-filed evidence to be relied upon. Instead, the Board held that it is sufficient for the technical effect to be “conceptually comprised by the broadest technical teaching of the application as filed”.

Interpreting Requirement (II)

Turning to requirement (ii), the Board held that the technical effect is to be considered “embodied” by the broadest technical teaching of the application as filed with regard to the claimed subject matter only if the skilled person, considering the application as filed in the context of their common general knowledge at the filing date, would have had no legitimate reason to doubt that the claimed subject matter can achieve the technical effect.

Importantly, the Board held that a lack of experimental proof in the application as filed that the claimed subject matter achieves the technical effect relied upon is not to be treated as a legitimate reason to doubt that the technical effect is achieved. The Board held that the same applies to a lack of a “positive verbal statement” to this extent. Instead, the Board held that such a legitimate reason arises only if the technical effect “is irreconcilable with the common general knowledge”. In other words, a party wishing to establish such doubt must provide “evidence, derived from the common general knowledge, as to why the skilled person would have legitimate reason to doubt that the specific purported technical effect can be achieved” by the claimed subject matter.

Divisional Applications

The Board in T 116/18 also offered insight into the application of G 2/21 to divisional applications.

Specifically, since a divisional application does not have to be identical to its parent application, and may thus have its own “broadest technical teaching”, the assessment of whether requirements (i) and (ii) are met must be performed for both the parent application as filed and the divisional application as filed independently of each other. Only if requirements (i) and (ii) are met for both the parent and the divisional may the applicant/proprietor be permitted to rely on post‑filed evidence in support of inventive step for the divisional application.

Summary

Until now, it has been unclear how the EPO’s Examining and Opposition Divisions, as well as the EPO’s Boards of Appeal, would interpret G 2/21.

The decision in T 116/18 provides much needed insight into how G 2/21 is likely to be applied by the EPO moving forwards, and will therefore be of interest to anyone involved in cases before the EPO where post-filed evidence is at issue.

Of particular interest is that the Board in T 116/18 appears to have given little, if any, consideration to whether the technical effect was plausible / not implausible in view of the application as filed. Instead, the Board appears to have placed much more weight on what the “broadest technical teaching” of the application as filed is with regard to the claimed subject matter, and whether the technical effect relied on by the applicant/proprietor is both “encompassed” and “embodied” by that teaching. It would therefore appear that the era of “plausibility” has come to an end, and that the new requirements of G 2/21 will govern the role of post‑filed evidence in proceedings before the EPO in the future.