Basically plausible: one year after G 2/21

After the decision of the Enlarged Board of Appeal of the European Patent Office (G 2/21 of March 23, 2023) did not seal the end for all experimental data submitted later to prove a technical effect, the question arises one year later how the Boards of Appeal deal with the guidelines established in G 2/21.

In response to the questions posed by the Technical Board of Appeal (in T 116/18 of October 11, 2021), the Enlarged Board of Appeal had 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.

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.

While the first answer clearly states that evidence, usually in the form of experimental data, may not be disregarded because it was filed subsequently, the second answer requires an assessment of whether a technical effect can be inferred from the original application documents.

A good year after the decision of the Enlarged Board of Appeal was announced, there are many decisions of the Board of Appeal relating to G 2/21 and assessing the assertion of a technical effect.

Consideration of subsequently filed evidence

In T 116/18, from which the decision of the Enlarged Board of Appeal arose, it was concluded on the basis of G 2/21 that the subsequently filed experimental data on the synergistic effect of the claimed insecticides must be taken into account.

In T 1515/20 and T 728/21, subsequently filed experimental data were also taken into account, since the technical effect was clearly disclosed in the original documents.

In T 1989/19, the technical effect of an improved shelf life was recognized as encompassed and embodied in the originally disclosed particle size stability of an active substance micronisate. Moreover, it was the view of the Board of Appeal that an admissibly derivable technical effect always implicitly included the aim of improving this effect, since the skilled person always strives for further development and improvement.

In T 2716/19, the fact that a dependent claim was directed to specific alkoxides was seen as an indication that these could be associated with a technical effect. Furthermore, the skilled person could have deduced the improvement in yield from the yield of an experimental example in the original application. The subsequently filed documents proving the improvement in yield were therefore considered.

In T 885/21 and T 1329/21, a technical effect and, based thereon, an inventive step was recognized on the basis of the subsequently filed experimental data, since the technical effect was encompassed by the original documents and embodied by the originally disclosed invention. In these decisions, the technical effect could be directly derived from the original application documents.

In T 1445/21, subsequently filed experimental data were taken into account, even if it was ultimately not sufficient for a technical effect of the distinguishing features. It is noteworthy that the recognized technical effect of olfactory performance or intensity was considered to be encompassed by the originally disclosed technical effect of the stability of the fragrance microcapsules.

Partial consideration of the subsequently submitted evidence

In T 2046/21, subsequently filed experimental data for a technical effect, disclosed in the original application, of a combination of active ingredients were taken into account, whereas further claimed effects according to other subsequently filed documents were not considered, since these specific technical effects were neither disclosed nor indicated in the original application documents. Overall, inventive step was denied.

In T 0681/21, subsequently submitted experimental data showing an originally disclosed technical effect for a preferred feature combination according to the auxiliary request was allowed, while a synergistic effect claimed in the main request for another preferred feature combination was considered not to be covered by the technical teaching of the original application documents. As a result, this synergistic effect could not have been effectively demonstrated on the basis of experimental data submitted later.

No consideration of the subsequently submitted evidence

In T 852/20, the technical effect for the claimed crystalline form of a compound was found not to be covered by the technical teaching, since the relevant paragraphs of the description referred only to the amorphous form of the compound.

In T 258/21, a technical effect based on subsequently filed documents was not considered, since the technical effect was neither disclosed nor suggested in the original documents.

In T 887/21, a technical effect on the basis of subsequently filed documents was not considered, since the technical effect shown there did not even correspond to the vague hypotheses regarding a possible effect in the original application documents. It was emphasized that an invention could not be based on knowledge that only became available after the filing date.

No relevance in case of sufficiency of disclosure

The Boards of Appeal have consistently rejected the transferability to objections in the case of sufficiency of disclosure hoped for by some patent proprietors, particularly in the case of second medical uses (see T 1435/20, T 25/20, T 2790/17, T 1779/21, T 552/22). What matters here is the status on the date of filing and subsequently filed evidence with a later priority date cannot turn the tide on its own. Only in T 1796/22 were subsequently filed documents considered as additional evidence that the application was sufficiently disclosed on the date of filing, in addition to the experimental examples of the original application.

Conclusion

Subsequently filed evidence with later priority may continue to support a technical effect to prove inventive step if this effect can at least be deduced from the original application documents. Applicants are advised not to keep the description of the technical effect of features and feature combinations too brief or even to omit it. Otherwise, this may come back to haunt them later.